Case 2:17-cv-00676-RWS-RSP Document 177 Filed 12/12/18 Page 1 of 8 PageID #: 7922
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`GODO KAISHA IP BRIDGE 1,
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`Plaintiff,
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`Case No. 2:17-cv-00676-RWS-RSP
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`v.
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`INTEL CORPORATION,
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`Defendant.
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` JURY TRIAL DEMANDED
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY
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`Case 2:17-cv-00676-RWS-RSP Document 177 Filed 12/12/18 Page 2 of 8 PageID #: 7923
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`Plaintiff Godo Kaisha IP Bridge 1 (“IP Bridge”) respectfully submits this brief response to
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`Defendant Intel Corporation’s Notice of Additional Authority (Dkt. No. 175) (“Notice”).1
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`Regarding the standard of review to be applied to Judge Payne’s rulings on Intel’s non-
`dispositive motion to transfer venue:
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`Intel’s Notice highlights the fundamental flaws in Intel’s arguments concerning the
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`applicable standard of review of Judge Payne’s findings concerning Intel’s § 1404(a) motion to
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`transfer venue. The question is whether the issue ruled upon is dispositive or non-dispositive; not
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`the vehicle through which the ruling is delivered. At oral argument and in the face of
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`overwhelming support, Intel conceded that motions to transfer venue are non-dispositive.
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`(11/20/18 Hrg. Tr. at 38:18-39:3.) With that concession, there should be no remaining dispute that
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`this Court applied an incorrect standard of review: The governing statute here, 28 U.S.C. §
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`636(b)(1), as well as IP Bridge’s cited case law and Federal Rule of Civil Procedure 72, all confirm
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`that the statutorily prescribed standard of review for a magistrate judge’s findings depends on
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`whether the underlying motion is dispositive or non-dispositive. Accordingly, this Court was
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`required to apply the clearly erroneous standard of review to Judge Payne’s finding on Intel’s
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`motion to transfer venue.
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`Intel’s attempt to distinguish IP Bridge’s cases does not withstand scrutiny for at least three
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`reasons. First, Intel attempts to explain away those cases in which the court held that it must apply
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`the clearly erroneous standard of review to a Report and Recommendation (“R&R”) on a motion
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`to transfer venue, arguing that those courts merely “chose” to apply that standard of review. (See
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`1 A notice of additional authority typically includes a citation to new case law, without argument or analysis. In
`contrast, Intel’s Notice does not contain a citation to new case law, but instead contains substantial argumentation
`about cases raised at the hearing on IP Bridge’s Motion for Reconsideration. While Intel complains that IP Bridge
`raised at the hearing cases not cited in the briefing, Intel cannot deny that the majority of those cases responded to
`arguments that Intel made for the first time in its sur-reply brief (Dkt. No. 170), to which IP Bridge had not previously
`had an opportunity to respond. Should the Court consider the new arguments Intel raises in its Notice, IP Bridge
`respectfully requests the Court also consider IP Bridge’s Response to Intel’s Notice.
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 1
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`Notice at 1-2 & n.1.) In other words, Intel asserts that the applicable standard of review is a matter
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`of choice for the district judge, rather than a matter prescribed by statute. Intel’s characterization
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`of those cases could not be more wrong. 2 None of those cases characterized the applicable
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`standard of review as a choice. Indeed, the very fact that those cases analyzed what standard of
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`review to apply demonstrates that the courts did not view the standard to apply to be a matter of
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`choice—if it were a choice, such analysis would be unnecessary since the court could just select
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`what standard to apply. Each of those cases establishes that this Court clearly erred in applying
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`de novo review to Judge Payne’s findings concerning Intel’s motion to transfer venue.
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`Intel’s argument that the Court may “choose” what standard of review to apply not only is
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`unsupported by the cited cases, it fundamentally contravenes the statute. The Federal Magistrates
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`Act empowers district judges, in the exercise of their discretion, to refer certain matters to
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`magistrate judges. 28 U.S.C. § 636(b)(1). When a district judge exercises that discretion, a party
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`may file objections to the magistrate judge’s resolution of such matter, as Intel did here. Id. When
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`a party does so object, Congress mandated the standard of review the court must apply based on
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`whether the underlying matter is non-dispositive or dispositive: clearly erroneous or contrary to
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`law for those matters not excepted from § 636(b)(1)(A) (i.e., for non-dispositive matters), and de
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`2 In Smith v. Hilton, this Court looked to the statute, 28 U.S.C. § 636(b)(1)(A), and determined that it must apply the
`clearly erroneous standard of review to the R&R on transfer, because a transfer motion is non-dispositive. No. 6:16-
`cv-913, 2016 WL 6246449, at *1 (E.D. Tex. Oct. 26, 2016) (“Because the instant motions are non-dispositive, the
`Court reviews the Magistrate Judge’s findings for clear error.”). Likewise, in Capstone, the court looked to the statute
`and Rule 72 and held that the “only” question for the Court when reviewing a magistrate judge’s determination of a
`non-dispositive matter is whether it was “clearly erroneous or contrary to law.” Capstone Int’l, Inc. v. Univentures,
`Inc., No. 3:10-CV-416, 2011 WL 4529372, at *2-*3 (N.D. Ind. Sept. 28, 2011) (noting that “when reviewing a
`magistrate judge’s non-dispositive decision to transfer a case, the Court asks only whether the order is “clearly
`erroneous or contrary to law,” treating the magistrate judge’s R&R on transfer as a “nullity” because the statue does
`not provide for a magistrate judge to issue an R&R on a non-dispositive matter, and returning the underlying motion
`to transfer to the magistrate judge for issuance of an order rather than an R&R). And, in McEvily, the court flatly
`rejected the argument that it would be proper to apply de novo review to an R&R on a motion to transfer venue, noting
`that “clearly erroneous” is “the one” standard to be applied to non-dispositive matters. McEvily v. Sunbeam-Oster
`Co., 878 F. Supp. 337, 340 (D.R.I. 1994) (“I need labor no further—as a motion to transfer venue is a nondispositive
`motion, the ‘clearly erroneous’ standard is the one to be employed in deciding this appeal.”).
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 2
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`novo for those matters that are excepted from § 636(b)(1)(A) (i.e., for dispositive matters). See 28
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`U.S.C. § 636(b)(1)(A) & (B).3 Nothing in the statute makes the applicable standard of review a
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`matter of choice for the district court.4 Critically, Intel has not cited a single case holding that a
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`district judge may choose which standard of review to apply in reviewing a matter referred to a
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`magistrate judge. The standard of review is set by statute.
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`Second, Intel unsuccessfully attempts to distinguish a trio of cases from the Southern
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`District of New York.5 (See Notice at 2 & n.4.) Each of those cases held that the applicable
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`standard of review of a magistrate judge’s R&R turns on whether the underlying motion is
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`dispositive or non-dispositive, not on whether the magistrate judge styled the decision an R&R
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`versus an order.6 Intel attempts to distinguish these cases on the basis that they did not involve a
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`motion to transfer venue, but that is a difference without distinction. Nothing in the Federal
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`Magistrates Act, Rule 72, or any other relevant law sets motions to transfer venue apart from other
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`3 See also Fed. R. Civ. P. 72; Peretz v. United States, 501 U.S. 923, 944 (1991) (“The Federal Magistrates Act provides
`two separate standards of judicial review: ‘clearly erroneous or contrary to law’ for magistrate resolution of
`nondispositive matters, see 28 U.S.C. § 636(b)(1)(A), and ‘de novo’ for magistrate resolution of dispositive matters,
`see § 636(b)(1)(B)–(C).”).
`4 Similarly, and contrary to Intel’s suggestion, nothing in the statute permits a magistrate judge to dictate the standard
`of review to be applied by the district judge by “elect[ing]” to issue a report and recommendation. (See Notice at 2).
`Consistent with the statutory text, and all of the case law, the standard of review turns on whether the motion is non-
`dispositive, and is not a matter of choice for the magistrate judge or district judge.
`5 Intel also addresses the Fourth Circuit’s decisions in Aluminum Co. of Am., but IP Bridge highlighted that case at the
`hearing as further support for the proposition that motions to transfer venue are non-dipositive, a point that Intel
`conceded. Further, contrary to Intel’s assertion, IP Bridge did address that case in prior briefing. (Dkt. No. 168 at 3.)
`6 Nikkal Indus., Ltd. v. Salton, Inc., 689 F. Supp. 187 (S.D.N.Y. 1988) (“In reviewing Magistrate Francis’s findings,
`the court will be guided by the Judicial Procedure Act, 28 U.S.C. § 636 (1986), which directs that one of two standards
`are applicable in the instant situation. Either a de novo review or a clearly erroneous standard will be employed. The
`standard depends on whether the issue decided by the magistrate is dispositive or non-dispositive.”) (emphasis
`added); R.F.M.A.S., Inc. v. So, 748 F. Supp. 2d 244, 285 n.1 (S.D.N.Y. 2010) (“Although Magistrate Judge Dolinger
`characterized his ruling as a Report and Recommendation, for the purposes of the applicable standard of review this
`Court considers the relevant inquiry, consistent with the plain text of 28 U.S.C. § 636(b)(1)(A) and Federal Rule of
`Civil Procedure 72(a), to be whether the pretrial matter at issue is ‘dispositive of a party's claim or defense,’ rather
`than how a magistrate judge styles his decision.”) (emphasis added); Chichinlnisky v. Trustees of Columbia Univ. in
`City of New York, No. 91-cv-4617, 1993 WL 403972, at *9 (S.D.N.Y. Oct. 7, 1993) (“For this Court to reject all or a
`portion of the report [and recommendation], Columbia must demonstrate that the Magistrate Judge’s findings are
`clearly erroneous or contrary to law.”) (emphasis added).
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 3
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`Case 2:17-cv-00676-RWS-RSP Document 177 Filed 12/12/18 Page 5 of 8 PageID #: 7926
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`non-dispositive motions. The analysis and holding of this trio of cases apply equally here to Intel’s
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`non-dispositive motion to transfer venue. Further, Intel’s argument that none of those cases
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`concluded it would be error to review an R&R on a non-dispositive issue de novo, simply ignores
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`the express holding of each of those cases—that the district court must apply the “clearly erroneous”
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`standard of review to an R&R on a non-dispositive matter. See supra footnote 6. Each of these
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`cases also establishes that this Court clearly erred in applying de novo review to Judge Payne’s
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`findings concerning Intel’s motion to transfer venue.
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`Third, and perhaps in recognition that it cannot adequately distinguish the cited cases, Intel
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`concludes its argument concerning the proper standard of review by referring to a “practice” of
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`magistrate judges issuing R&Rs on motions to transfer venue and of district courts reviewing those
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`R&Rs de novo. (See Notice at 3.) But Intel’s argument fails for two reasons. First, past “practice”
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`does not and cannot trump statutory law. Second, as noted at the hearing, in every case that Intel
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`cited concerning such past “practice,” the district judge affirmed the magistrate judge’s R&R. (See
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`11/20/18 Hrg. Tr. at 65:9-25.) The issue present here, however, only arises when a district judge
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`reverses a magistrate judge’s findings on a non-dispositive matter: A magistrate judge’s decision
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`that is affirmed under de novo review would necessarily and a fortiori be affirmed under
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`deferential “clearly erroneous” review. Intel’s heavy reliance, therefore, on past “practice” misses
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`the mark, as any such “practice” has no bearing on the present issue before this Court.
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`Regarding this Court’s analysis of witness convenience:
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`At the hearing, as IP Bridge did in briefing (Dkt. No. 161 at 8-9; Dkt. No. 168 at 3-5), IP
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`Bridge cited to numerous cases that establish that the Court must consider all potential material
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`and relevant witnesses in the transfer analysis. In its Notice, Intel does not contest the force of this
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`legal principle. Instead, Intel argues that those cases do not establish that “this Court committed
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 4
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`any error in weighing IP Bridge’s generically-identified third party witnesses.” (Notice at 3.) But
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`again, Intel’s argument strays wide of the mark. The error here was not in how the Court weighed
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`IP Bridge’s third party witnesses—it was that the Court failed to weigh them at all. By removing
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`third party witnesses from the willing witnesses factor and then not considering those third parties
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`under the unwilling witnesses factor, the Court removed IP Bridge’s third parties from the analysis
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`altogether. That was clear error. And had the Court considered IP Bridge’s third party witnesses
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`under the unwilling witnesses factor after removing them from the willing witnesses factor, then
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`the unwilling witnesses factor indisputably would weigh in favor of not transferring out of this
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`District.7
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`*
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`*
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`*
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`Intel’s attempt via its Notice to explain away cases directly on point to the issues before
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`this Court, fails. The case law cited in Intel’s Notice confirms that reconsideration is warranted to
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`address and correct certain clear errors that, respectfully, this Court made in reversing Judge Payne
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`and ordering transfer to the District of Oregon.
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`7 As IP Bridge noted during the hearing, Intel’s argument that the third party witnesses IP Bridge identified are entitled
`to no weight because they are identified by company name, not individual name, is an argument that Intel did not raise
`in the briefing before Judge Payne on Intel’s motion to transfer venue, and therefore waived. (11/20/18 Hrg. Tr. at
`26:8-27:1.) Intel admitted that it did not raise that argument until it filed objections to Judge Payne’s R&R. (Id. at
`40:25-41:8.) And, as IP Bridge pointed out at the hearing, Fifth Circuit law holds that a party waives any argument
`presented for the first time in objections to an R&R. See epicRealm Licensing, LLC v. Autoflex Leasing, 492 F. Supp.
`2d 608, 613 (E.D. Tex. 2007) (“The 5th Circuit has held that the issues raised for the first time in objections to a
`Report and Recommendation of a magistrate judge are not properly before the district judge.”).
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 5
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`Case 2:17-cv-00676-RWS-RSP Document 177 Filed 12/12/18 Page 7 of 8 PageID #: 7928
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`Respectfully submitted,
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`/s/ Jennifer H. Doan
`Jennifer H. Doan
`State Bar No. 08809050
`Joshua R. Thane
`State Bar No. 24060713
`J. Randy Roeser
`Texas Bar No. 24089377
`Kyle R. Akin
`Texas Bar No. 24105422
`HALTOM & DOAN
`6500 Summerhill Road, Suite 100
`Texarkana, Texas 75503
`Telephone: (903) 255-1000
`Facsimile: (903) 255-0800
`Email: jdoan@haltomdoan.com
`Email: jthane@haltomdoan.com
`Email: rroeser@haltomdoan.com
`Email: kakin@haltomdoan.com
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`James R. Batchelder
`(CA Bar. 136347)
`(Eastern District of Texas Member)
`Andrew N. Thomases
`(CA Bar No. 177339)
`(Eastern District of Texas Member)
`Andrew T. Radsch
`(CA Bar No. 303665)
`(Eastern District of Texas Member)
`Christopher M. Bonny
`(CA Bar No. 280554)
`(Eastern District of Texas Member)
`Joseph B. Palmieri
`(CA Bar No. 312725)
`(Eastern District of Texas Member)
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Telephone: (650) 617-4000
`Facsimile: (650) 617-4090
`james.batchelder@ropesgray.com
`andrew.thomases@ropesgray.com
`andrew.radsch@ropesgray.com
`christopher.bonny@ropesgray.com
`joseph.palmieri@ropesgray.com
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 6
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`Case 2:17-cv-00676-RWS-RSP Document 177 Filed 12/12/18 Page 8 of 8 PageID #: 7929
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`Alexander E. Middleton
`(Eastern District of Texas Member)
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`Telephone: (212) 596-9000
`Facsimile: (212) 596-9090
`alexander.middleton@ropesgray.com
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`ATTORNEYS FOR GODO KAISHA IP
`BRIDGE 1
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
`compliance with Local Rule CV-5(a). Pursuant to Local Rule CV-5(c), all counsel of record were
`served a true and correct copy of the foregoing document by electronic mail on this the 12th day of
`December, 2018.
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`/s/ Jennifer H. Doan
`Jennifer H. Doan
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`IP BRIDGE’S RESPONSE TO INTEL’S NOTICE OF ADDITIONAL AUTHORITY – Page 7
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