Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 1 of 9 PageID #: 3057
`Case 5:19-cv-00036—RWS Document 66-22 Filed 08/27/19 Page 1 of 9 PageID #: 3057
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`EXHIBIT 21
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`EXHIBIT 21
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`Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 2 of 9 PageID #: 3058
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 1 of 8
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`CORE WIRELESS LICENSING
`S.A.R.L.
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`Plaintiff,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CIVIL ACTION NO. 6:14-cv-751-JRG-JDL
`CIVIL ACTION NO. 6:14-cv-752-JRG-JDL
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`JURY TRIAL DEMANDED
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`Defendant.
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`CORE WIRELESS LICENSING S.A.R.L.’S SUR-REPLY IN SUPPORT OF ITS
`OPPOSITION TO APPLE’S MOTION TO TRANSFER VENUE
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`Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 3 of 9 PageID #: 3059
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 2 of 8
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`I.
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`INTRODUCTION
`As explained in Core Wireless’s opposition, judicial efficiency is a major factor that
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`disfavors transfer of these cases. In its Reply, Apple attempts to argue that California courts can
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`be as efficient as this Court. Considering the substantial institutional knowledge of this Court
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`directly related to these cases and other co-pending cases involving overlapping patents,
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`however, transferring the cases after ten months of litigation in this District to a court with no
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`such knowledge or experience will undeniably incur a high cost in judicial efficiency. Apple
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`also unjustifiably downplays Core Wireless’s Texas presence and identified Texas witnesses.
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`While chastising Core Wireless for being a small entity, Apple at the same time (inaccurately)
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`paints Core Wireless as an entity with unlimited resources that can shoulder the increased burden
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`of litigating this case in California; meanwhile, Apple has already admitted Texas is not
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`inconvenient. Apple has not met, and cannot meet, its high burden to justify transfer.
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`II.
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`ALL RELEVANT FACTORS WEIGH AGAINST TRANSFER
`A.
`Judicial Efficiency Weighs Against Transfer
`Try as it might, Apple cannot dispute the fact that judicial efficiency overwhelmingly
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`weighs against transfer. In its Reply, Apple argues that the California courts could handle the
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`claim construction issues as efficiently as this Court; but that defies logic. Even if the Courts
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`were to grant the relief that both Apple and LG seek, multiple courts would still be overseeing
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`the cases, and judicial efficiency would be wasted. For example, LG sought to transfer the
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`originally filed -912 case to the Southern District of California. Thus, both the Northern District
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`of California and the Southern District of California would be ruling on the new overlapping
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`standard essential patents (SEPs), and it is highly unlikely that these Courts would consolidate
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`the Markman proceedings, and certainly not on the schedule this Court can offer – indeed
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`opening briefs have already been filed in cases against both Apple and LG. (Further, the
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`Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 4 of 9 PageID #: 3060
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 3 of 8
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`Southern District of California would also have to get fully up to speed on the SEPs that were
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`asserted against Apple in 12-cv-100, without the benefit of this Court’s institutional knowledge,
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`thereby resulting in further wasted resources.) As both parties have acknowledged, this Court
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`has efficiently opted to consolidate the case for Markman proceedings only.1 The same Texas-
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`based technical advisor who advised the Court in the first SEP case, Mr. Egan, will be assisting
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`the Court with the claim construction procedure here, which further weighs against transfer.
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`But judicial efficiency is not served just by the consolidated Markman proceedings. This
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`Court also has specific familiarity with the parties, and is well versed in the facts surrounding the
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`years of negotiation attempts, rejected meeting requests, and offers that form part of Core
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`Wireless’s breach of contract claims asserted in this case. Thus, unlike PersonalWeb Techs, LLC
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`v. NEC Corp. of Am., Inc., No. 6:11-CV-655, 2013 U.S. Dist. LEXIS 46296, *84-85 (E.D. Tex.
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`Mar. 21, 2013) (Davis, J.), this Court’s institutional knowledge will be further beneficial for trial,
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`not just the Markman proceedings. This Court’s familiarity with the parties and this cause of
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`action further weighs against transfer. Apple does not deny this fact.
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`B.
`Cost of Attendance for Willing Witnesses Weighs Against Transfer
`If these cases are transferred to California, costs for Core Wireless’s witnesses to attend
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`trial will be greater; if the cases are not transferred, costs for Apple’s witnesses will be greater.
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`1 Apple argues that Core Wireless is taking inconsistent positions about the appropriateness of
`deciding issues of the co-pending Apple and LG cases together. That is not true. In its
`opposition to LG’s motion to consolidate, with regard to the potential for inconsistent rulings,
`Core Wireless simply noted that there was no guarantee that LG and Apple would select the
`same claim terms (which turned out to be the case for many claims), and recognized that the
`Tyler Court in the Apple cases might benefit from the Markman ruling from the Marshall Court
`because the schedules were different. (See 14-cv-911, Dkt. 39 at 7-8). Core Wireless maintains
`that there is not adequate justification for consolidating the cases, and Apple must concur
`because it has never requested consolidation.
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`Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 5 of 9 PageID #: 3061
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 4 of 8
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`Apple would have the Court completely disregard Core Wireless’s witnesses located in this
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`district, which is unfair. Apple inaccurately argues that Core Wireless “identifies no employee
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`of either [Core Wireless, Texas or Conversant, Texas] with personal knowledge of specific
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`relevant facts.” (Reply at 3.) But Core Wireless’s brief and supporting documents clearly
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`identify that Core Wireless employee Brad Johnson worked on the prosecution of the asserted
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`‘818 patent (Opp., Ex. C at 3); and Doo Seon Shin, a Texas-based Conversant employee, has
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`knowledge about the portfolio acquisition and licensing efforts. (Opp. at 13.)
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`The added cost for willing party witnesses to litigate in their non-preferred forum is, at
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`best, neutral, particularly considering the burden relative to each party’s financial strength.2 But
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`Apple ignores that costs for third-party willing witnesses, who carry more weight, weighs against
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`transfer. The only third-party who has stated a willingness to send its witnesses to trial is Cirrus
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`Logic. Travel costs for these witnesses, who appear to reside in or around Austin, Texas, will be
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`less if trial is held in Tyler, TX versus San Francisco, CA.3 To the extent prosecuting attorneys
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`or other identified potential witnesses residing on the East Coast are willing to attend, costs will
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`also be lower for them to travel to and stay in Texas than California.4
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`2 It is highly unlikely that Apple will bring to trial all of its identified party witnesses, even if the
`cases are transferred to California. As Core Wireless noted in its opposition, in the Apple 1 trial,
`Apple presented only a single live employee witness; and Apple never claimed this had to do
`with cost or convenience of the venue.
`3 San Francisco hotels were recently found to be the most expensive in the world, averaging
`nearly $400 per night. See Ex. 1.
`4 Apple claims that the convenience for those witnesses does not matter, and cites In re Toyota
`Motor Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014) (“The comparison between the transferor and
`transferee forums is not altered by the presence of other witnesses and documents in places
`outside both forums.”). But in that case, like in Genentech, no identified witnesses resided in the
`transferor forum. Here, that is not the case, and it is appropriate to consider the locations of all
`witnesses.
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 5 of 8
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`C.
`Third Party Convenience and Compulsory Process Weigh Against Transfer
`There are only two named third-party witnesses. Apple identifies one Qualcomm witness
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`by name who is subject to absolute subpoena power in California, (Mot. at 6), and Core Wireless
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`identifies one third-party prosecuting attorney subject to the absolute subpoena power in Texas.
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`(Opp. at 5.) Apple claims that it could not locate other witnesses yet because “the accused
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`technology is not specific enough.” (Reply at n.3.) But, despite having Core Wireless’s detailed
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`infringement contentions for more than four and a half months, Apple had never before
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`complained about their adequacy. If Apple could work with its business partner, Qualcomm, to
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`identify one witness, it should have been able to do the same for other third-parties, if they are
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`relevant or exist.
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`The probable location of other third-parties also does not weigh in favor of transfer.
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`Apple has identified no reason that it will seek discovery from the eleven third-parties Core
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`Wireless referred to in its contentions.5 The references in Core Wireless’s infringement
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`contentions are to features that Apple’s iOS devices perform, which are also used by cited,
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`exemplary app developers. The references do not mean that those third-parties have relevant
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`information about how Apple’s products work. Indeed, neither Core Wireless nor Apple has
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`issued subpoenas to any of these companies. Because relevant third parties are located in Texas
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`(e.g., prosecuting firms, Cirrus Logic, etc.) as well as other states (including on the East Coast
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`which provides more convenient access to Texas than California), and because “the Court will
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`not base its conclusions on unidentified witnesses,” NovelPoint Learning LLC v. LeapFrog
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`5 These include CNN, ESPN, Facebook, MapQuest, Skype, Google, Twitter, Uber, the Weather
`Channel, Yahoo! and Yelp.
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 6 of 8
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`Enters., No. 6:10-CV-229 JDL, 2010 U.S. Dist. LEXIS 128906, *18 (E.D. Tex. Dec. 6, 2011),
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`this factor does not favor transfer.
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`D.
`Public Interest Factors Weigh Against Transfer
`Apple cannot reasonably believe that this case will be adjudicated as swiftly in the
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`Northern District of California, where it is undisputed that the time to trial is much longer than
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`here. While it is true that Courts in this District are busy, the Courts are efficient, and the
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`statistics prove it. (Opp., Ex. K.) Moreover, Apple does not take into consideration the fact that
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`the cases have been litigated for close to a year in this District, with a Markman hearing
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`scheduled in a little over a month. Even ignoring the significant statistical differences in the time
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`to trial between the districts, the time to trial in California will be much longer than here because
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`of the ten-month head start in this District. Transfer will cause a significant delay.
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`The local interest factor is at best neutral. As in the Apple 1 case, Apple disclaims
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`knowledge of how its accused products operate in compliance with standards, pointing its finger
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`instead at Qualcomm, which is not located in the transferee venue. Further, concerning the
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`implementation patents, Apple points its finger at myriad third-parties located throughout the
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`country (although Core Wireless disputes their relevance). Meanwhile, Apple again
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`unjustifiably discounts the presence of Core Wireless’s Texas entities that have a legitimate
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`Texas business operation established long before this suit was filed.
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`III. CONCLUSION
`Apple asks that this Court throw away its hard-earned knowledge regarding the parties,
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`the claims, the patents and their technologies and transfer these cases to a court with no
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`familiarity with any of the issues. But Apple has failed to meet its significant burden to show
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`that transfer would be clearly more convenient. The Court should deny Apple’s motion.
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`Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 8 of 9 PageID #: 3064
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 7 of 8
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`Dated: August 3, 2015
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`Respectfully Submitted,
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`By: /s/ Henry C. Bunsow
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`Henry C. Bunsow (California SBN 60707)
`Brian A.E. Smith (California SBN 188147)
`Matthew F. Greinert (California SBN 239492)
`Dino Hadzibegovic (California SBN 267489)
`Robin Curtis (California SBN 271702)
`BUNSOW, DE MORY, SMITH & ALLISON LLP
`351 California Street, Suite 200
`San Francisco, CA 94104
`Telephone: (415) 426-4747
`Facsimile: (415) 426-4744
`Email: hbunsow@bdiplaw.com
`Email: bsmith@bdiplaw.com
`Email: mgreinert@bdiplaw.com
`Email: dhadzibegovic@bdiplaw.com
`Email: rcurtis@bdiplaw.com
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`Denise M. De Mory (California SBN 168076)
`Craig Y. Allison (California SBN 161175)
`Cliff Win (California SBN 270517)
`BUNSOW, DE MORY, SMITH & ALLISON LLP
`701 El Camino Real
`Redwood City, CA 94063
`Telephone: (650) 351-7248
`Facsimile: (650) 351-7259
`Email: ddemory@bdiplaw.com
`Email: callison@bdiplaw.com
`Email: cwin@bdiplaw.com
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`T. John Ward, Jr. (Texas Bar # 00794818)
`Wesley Hill (Texas Bar # 24032294)
`WARD & SMITH LAW FIRM
`1127 Judson Road, Suite 220
`Longview, Texas 75601
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`Email: jw@wsfirm.com
`Email: wh@wsfirm.com
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`Attorney for Plaintiff
`Core Wireless Licensing S.A.R.L.
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`Case 5:19-cv-00036-RWS Document 66-22 Filed 08/27/19 Page 9 of 9 PageID #: 3065
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`Case 5:15-cv-05008-NC Document 93 Filed 08/03/15 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Therefore, this document was served on all counsel who
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`are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to
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`Fed.R.Civ.P. 5(d) and Local Rule CV-5(e), all other counsel of record not deemed to have
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`consented to electronic service were served with a true and correct copy of this document via
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`email, facsimile and/or U.S. First Class Mail.
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`/s/ Henry C. Bunsow
`Henry C. Bunsow
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`PUBLIC VERSION
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