Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 1 of 31 PageID #: 3996
`
`Maxell Ltd.’s
`Opposition to Apple’s
`Motion to Transfer
`
`September 17, 2019
`
`
`
`Maxell Ltd.’s
`Opposition to Apple’s
`Motion to Transfer
`
`September 17, 2019
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 2 of 31 PageID #: 3997
`
`Legal Standard
`
`The section 1404(a) analysis turns on a number of public and private interest
`factors, none of which is given dispositive weight.
`
`The private factors:
`
` •
`
`•
`•
`•
`
`The public factors:
`
`(1) ease of access to evidence (“sources of proof”);
`(2) subpoena power over potential witnesses;
`(3) cost of attendance for willing witnesses; and
`(4) other practical problems.
`
`(1) administrative difficulties flowing from court congestion;
`(2) local interest in having localized interests decided at home;
`(3) the familiarity of the forum with the law that will govern the case; and
`(4) the avoidance of unnecessary problems of conflict of laws.
`
` •
`
`•
`•
`•
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 3 of 31 PageID #: 3998
`
`Apple’s Burden
`
`• Apple’s burden is to show that the Northern District of
`California would be clearly more convenient for the parties
`than the Eastern District of Texas.
`e-Watch Inc. v. Apple, Inc., 2016 WL 7338342, at *1 (E.D. Tex.
`Dec. 19, 2016).
`
`• The burden is a “significant” one.
`AGIS Software Dev. LLC v. Apple, Inc., 2018 WL 2721826 (E.D.
`Tex. June 6, 2018).
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 4 of 31 PageID #: 3999
`
`Apple Failed to Meet Its
`Burden
`
`Apple Failed to Satisfy its Significant Burden:
`
`The private factors:
`
`(1) ease of access to sources of proof weighs against transfer;
`(2) subpoena power over potential witnesses is neutral;
`(3) cost of attendance for willing witnesses weighs against transfer;
`(4) other practical problems weigh against transfer.
`
`The public factors:
`
`(1) Court congestion weighs against transfer;
`(2) local interests are neutral;
`(3) familiarity with governing law is neutral;
`(4) conflict of laws are neutral.
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 5 of 31 PageID #: 4000
`
`Apple Failed to Meet Its
`Burden
`
`Ease of Access to Source of Proof Weighs Against Transfer:
`Apple’s Evidence
`
`• Apple contends its documents are in NDCA or electronically
`accessible from NDCA.
`• Apple’s burden is to provide evidence of categories and
`volumes of documents, or, even better, examples of physical
`evidence that might have a real bearing on allegations of
`infringement.
`Affinity Labs of Tex. V. Samsung Elecs. Co., Ltd., 968 F. Supp. 2d
`852, 857 (E.D. Tex. 2018).
`• It hasn’t doesn’t done that.
`
`
`
`
`Apple Failed to Meet Its
`Burden
`
`Ease of Access to Source of Proof Weighs Against Transfer:
`Apple’s Evidence
`
`• Apple’s claim that all of its documents exist only in NDCA is
`demonstrably false:
`• “All of Apple’s documents concerning sales, and financial
`information for the accused products are also located in or
`around Cupertino.”
`Mot. at 10 (citing Jaynes ¶7, 17, 21 & 34).
`
`• Apple testified that one of its Austin facilities is responsible for
`all of Apple’s revenue reporting, collections, accounts payable,
`treasury, payroll, compensation services, accounting and
`royalties.
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 6 of 31 PageID #: 4001
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 7 of 31 PageID #: 4002
`
`Kayla Christie Testimony
`
`• Ex. 7 to Bakewell Dec., 133:15 - 24
`• 15 A. In Texas, it’s in Austin.
`• 16 Q. Which Campus?
`• 17 A. Parmer Lane.
`• 18 Q. Parmer Lane. Finance?
`• 19 A. Parmer Lane.
`• 20 Q. Parmer Lane. And can you tell me what
`• 21 aspects of finance are performed at Parmer Lane?
`• 22 A. Shared service center.
`• 23 Q. Shared service center.
`• 24 A. Yeah
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 8 of 31 PageID #: 4003
`
`Kayla Christie Testimony
`
`• Ex. 7 to Bakewell Dec., 134:1-10
`1 Q. What is that/
`2 A. And that includes revenue reporting,
`3 collections, accounts payable, treasury; we have
`4 payroll, compensation services, accounting,
`5 royalties
`6 Q. And royalties?
`7 A. uh-huh.
`8 Q. So revenue, is that for any particular
`9 segment within Apple or --
`10 A. It’s for all of Apple.
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 9 of 31 PageID #: 4004
`
`Apple Failed to Meet Its
`Burden
`
`Ease of Access to Source of Proof Weighs Against Transfer:
`Maxell’s Evidence
`
`• Documents stored in Texarkana at counsel’s office.
`
`• “[W]hen the presence of a party's documents in the transferor
`forum is questioned, the Court should take into consideration the
`strength of the party's ties to that forum”.
`
`
`Innovative Glob. Sys. LLC v. Onstar, LLC, 2012 WL 12930885, at
`*4 (E.D. Tex. Feb. 14, 2012).
`
`• Maxell has strong ties to the District so the location of its
`documents at counsel’s office is entitled to appropriate
`weight.
`
`
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 10 of 31 PageID #: 4005
`
`Apple Failed to Meet Its
`Burden
`
`Ease of Access to Source of Proof Weighs Against Transfer:
`Third-Party Evidence
`
`• Apple alleges there are Intel and Qualcomm documents in NDCA but fails to
`specify or identify what they are.
`
`
`• Apple says nothing of the documents that undoubtedly reside in Texas with
`Apple’s Texas suppliers:
`• Samsung Semiconductor – chips.
`• Flex – manufacturers the accused Mac Pro.
`
`• Apple dismisses all 17 these as generic components or services.
`Reply at 8.
`
`• Alan Loudermilk’s documents related to Maxell’s licensing discussions with Apple
`and MRDA are in EDTX.
`
`
`• MRDA’s documents from its R&D are in EDTX.
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 11 of 31 PageID #: 4006
`
`Apple Failed to Meet Its
`Burden
`
`Ease of Access to Source of Proof Weighs Against Transfer:
`Summary
`
`• Apple’s documents are in Cupertino and Austin
`
`• Maxell’s documents are in Texarkana but not in California
`
`• Important third-party documents are in EDTX and other parts of
`Texas
`
`
`• There are likely third-party documents in NDCA and other parts of
`California though Apple has yet to identify what or where they may
`be.
`
`
`• Factor weighs against transfer.
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 12 of 31 PageID #: 4007
`
`Apple Failed to Meet Its
`Burden
`
`The Availability of Compulsory Process is Neutral:
`
`• Party seeking transfer bears the burden to :
`• 1) identifying unwilling witnesses that would benefit from
`transfer; and
`• 2) demonstrate that the witnesses testimony would be
`important.
`Godo Kaisha IP Bridge 1 v. Intel Corp., 2018 WL 5728524, at *5 (E.D.
`Tex. Aug. 29, 2018) (collecting cases).
`
`• Apple has not met its burden with any of the third-parties it
`identifies.
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 13 of 31 PageID #: 4008
`
`Apple Failed to Meet Its
`Burden
`
`The Availability of Compulsory Process is Neutral:
`
`“When parties simply name third-party witnesses subject to the
`subpoena power of a particular court without identifying the
`nature of the testimony or asserting, on a good faith basis,
`whether a party intends to depose or call a witness to trial,
`analysis of this factor is a futile and pointless exercise.”
`
`Cypress Lake Software, Inc. v. H.P., Inc. (quoting Adaptix, Inc. v.
`Cellco P’ship, No. 6:15-cv-45 (E.D. Tex. Aug 12, 2015)).
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 14 of 31 PageID #: 4009
`
`Apple Failed to Meet Its
`Burden
`
`The Availability of Compulsory Process is Neutral:
`
`• Both Courts have nationwide deposition subpoena power.
`• Apple does not contend depositions are inadequate.
`• The Fifth Circuit views a videotape deposition as an acceptable
`substitute for live testimony because a videotape “allows jurors to
`gauge the witness’s attitude reflected by his motions, facial
`expressions, demeanor and voice inflections.” Battle ex rel. Battle v.
`Mem'l Hosp. at Gulfport, 228 F.3d 544, 554 (5th Cir. 2000).
`
`e-Watch Inc. v. Apple, Inc., 2016 WL 7338342 *3 (E.D. Tex.
`Dec. 19, 2016)
`• Apple has presented deposition testimony from Intel and
`Qualcomm even in NDCA where the unidentified
`engineers are supposedly located.
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 15 of 31 PageID #: 4010
`
`Apple Failed to Meet Its
`Burden
`
`The Availability of Compulsory Process is Neutral:
`
`• Maxell identified 17 component manufacturers with Texas
`operations and specified the relevant components and patents for
`each.
`Opp. at Appx. 1
`
`• Court has trial subpoena power for each of these entities.
`• Maxell already served document and deposition subpoenas on each.
`• Apple’s done nothing in regards to third-party discovery.
`• Neither this Court nor NDCA has trial subpoena power of all
`potential component suppliers.
`• Factor is neutral at worst.
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 16 of 31 PageID #: 4011
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Apple Witnesses
`
`• Apple’s Motion identified 12 Apple employees “likely to have
`to have discoverable information.”
`Mot. at 2.
`
`• Apple’s Reply again identifies “twelve employees likely to
`information relevant to this case, all of whom are in NDCA.”
`Reply at 7.
`
`
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Apple Witnesses
`
`• “The convenience of party witnesses is given little weight.”
`
`AGIS Software Dev. LLC v. Apple, Inc., 2018 WL 2721826 (E.D. Tex. June
`6, 2018).
`
`• Movant “must present the court with ‘more than a general
`allegation that certain key witnesses are necessary; the movant
`must specifically identify key witnesses and outline the substance of
`their testimony.’”
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 17 of 31 PageID #: 4012
`
`
`CIT Group/Commercial Servs, Inc. v. Romansa Apparel, Inc., 2003 WL
`169208 *5 (N.D. Tex. Jan. 1, 2003).
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 18 of 31 PageID #: 4013
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Apple Witnesses
`
`• Apple has no intention of bringing the 12 employees to trial:
`
`• “[T]he way these cases work, if we get to trial, there’s going to
`be one or maybe two technical fact witnesses and probably
`one fact person on the damages side of things.”
`
`AGIS Software Dev. LLC v. Apple, Inc., 2018 WL 2721826 (E.D.
`Tex. June 6, 2018) (quoting Apple’s argument at 1404(a)
`hearing).
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 19 of 31 PageID #: 4014
`
`Patrick Gates, Apple’s Chief
`Technology Officer
`
`• Bakewell Decl., Ex. 1, 38:18-22
`
`18 QUESTION: Is it inconvenient for Apple
`19 to go to the Eastern District of Texas for a patent
`20 infringement trial?
`21 ANSWER: I don't think it's any less
`22 convenient than any other place we go.
`
`• VirnetX, Inc. v. Apple, Inc., 6:10-cv-417 (E.D. Tex. Nov. 2,
`2012)
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 20 of 31 PageID #: 4015
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Apple Witnesses (third parties)
`
`• Apple’s Motion fails to specifically identify relevant third party
`witnesses.
`• Intel – no witness identified.
`• Qualcomm – no witness identified
`
`• The Court should discount any weight afforded Apple’s general
`and speculative assertions.
`Adaptix, Inc. v. HTC Corp., 937 F.Supp.2d 867, 876 (E.D. Tex.
`2013).
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 21 of 31 PageID #: 4016
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Apple Witnesses (third parties)
`
`• Apple failed to cure the deficiency in its Reply, instead identifying –
`for the first time – 3 former employees.
`
`
`Reply at 9 (identifying Risher, Maghame and Teksler for the first time).
`• No indication if Apple intends to call these individuals;
`• No indication if they are willing or unwilling third-parties;
`• No effort to outline the substance of their testimony;
`• No explanation for why a deposition is not sufficient.
`Adaptix, Inc. v. Cellco P’ship, No. 6:15-cv-45 (E.D. Tex. Aug 12, 2015)
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 22 of 31 PageID #: 4017
`
`Apple Failed to Meet Its
`Burden
`
`
`• The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Apple Witnesses (third parties)
`
`
`“When parties simply name third-party witnesses subject to the
`subpoena power of a particular court without identifying the
`nature of the testimony or asserting, on a good faith basis,
`whether a party intends to depose or call a witness to trial,
`analysis of this factor is a futile and pointless exercise.”
`
`Cypress Lake Software, Inc. v. H.P., Inc. (quoting Adaptix, Inc. v.
`Cellco P’ship, No. 6:15-cv-45 (E.D. Tex. Aug 12, 2015)).
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 23 of 31 PageID #: 4018
`
`Apple Failed to Meet Its
`Burden
`
`• The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer: Maxell Witnesses
`
`
`Kenji Nakamura
`• Senior Engineer Maxell IP Department
`
`• Director of Maxell Research Development
`
`• Maxell’s corporate representative in ZTE trial. “[W]ill be called
`by Maxell to provide live testimony in this litigation.”
`Opp. at 19; See also Nakamura Decl.
`
`
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 24 of 31 PageID #: 4019
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Maxell Witnesses (third-party)
`
`Alan Loudermilk
`• Marshall, Texas resident and entrepreneur;
`• Knowledge of Maxell’s licensing practices including specific
`negotiations with Apple;
`• Knowledge of damages and willfulness issues;
`• Relevant documents maintained in Marshall, Texas;
`• Knowledge of MRDA’s activities and development projects
`related to technologies at issue in this case.
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 25 of 31 PageID #: 4020
`
`Apple Failed to Meet Its
`Burden
`
`The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Maxell Witnesses (third-party)
`
`Alan Loudermilk
`• “Maxell fully intends to call [Mr. Loudermilk] to testify.”
`Opp. at 18.
`
`• The convenience of third parties takes priority over that of party
`witnesses.
`Uniloc USA v. Huawei Device USA, Inc., 2018 WL 7138384 *5 (E.D. Tex.
`Sep. 6, 2018).
`
`• Non-party status and inconvenience in attending trial in the NDCA
`“weighs heavily in the analysis.”
`Seven Networks, LLC v. Google, LLC, 2018 U.S. Dist. LEXIS 146375 *38
`(E.D. Tex. Aug 14, 2018).
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 26 of 31 PageID #: 4021
`
`Apple Failed to Meet Its
`Burden
`
`• The Costs of Attendance of Willing Witnesses Weighs Against
`Transfer:
`Not a numbers game
`
`• If the Court were to engage in counting, it would invite
`gamesmanship in an already speculative inquiry, encouraging
`both sides to over-designate witnesses in an attempt to have a
`higher “count” than the other.
`
`Implicit, LLC v. Palo Alto Networks, Inc., No. 6:17-CV-00336-JRG,
`2018 WL 1942411, at *5 (E.D. Tex. Feb. 20, 2018)
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 27 of 31 PageID #: 4022
`
`Apple Failed to Meet Its
`Burden
`
`Other Practical Problems Weigh Against Transfer:
`
`• Judicial economy will be served by the Court’s recent and
`extensive experience with the patents in suit.
`
`
`Implicit, LLC v. Palo Alto Networks, Inc., 2018 WL 1942411 *7
`(E.D. Tex. Feb 20, 2018).
`Godo Kaisha IP Bridge 1 v. Intel Corp., 2018 WL 5728524, at *7
`(E.D. Tex. Aug. 29, 2018).
`
`
`
`
`
`Apple Failed to Meet Its
`Burden
`
`Local Interest is Neutral
`
`• Both EDTX and NDCA have local interest in this matter.
`• Apple’s tax breaks and grants from Texas provide a local interest in EDTX tax
`payers.
`Papst Licensing, 2016 U.S. Dist LEXIS 177687 *19-20 (E.D. Tex.)
`
`e-Watch Inc. v. Apple, Inc., 2016 WL 7338342 *1 (E.D. Tex. Dec. 19, 2016).
`
`Maxell’s significant activities in the District render this factor neutral at worst:
`
`• 2014 Formed JV with EDTX company
`• 2017 Formed subsidiary to pursue business opportunities through the JV
`• 20 employees travelling to and working on MRDA projects in Marshall
`• Rent office space in two EDTX buildings
`• There is nothing ephemeral about Maxell’s presence in EDTX.
`• MRDA projects relate to technology in at least 3 of the patents in suit.
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 28 of 31 PageID #: 4023
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 29 of 31 PageID #: 4024
`
`Apple Failed to Meet Its
`Burden
`
`Court Congestion Weighs Against Transfer:
`
`• NDCA has a 55% longer time from filing to trial than EDTX
`• EDTX:
`18.3 months
`• NDCA:
`28.4 months
`Ex. 27 to Bakewell Dec. at p. 2&3.
`
`• Maxell has a financial interest in the sales of its licensees
`which are necessarily impacted by an unlicensed competitor.
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 30 of 31 PageID #: 4025
`
`Apple Failed to Meet Its
`Burden
`
`Familiarity With Governing Law is Neutral:
`
`• This Court is capable of resolving any dispute that may arise
`under the 2011 agreement.
`• No need for specialized knowledge of California law.
`
`ContentGuard Holdings, Inc. v. Amazon.com, Inc., 2015 WL
`1885256 *5-6 (E.D. Tex. Apr. 24, 2015).
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-1 Filed 09/18/19 Page 31 of 31 PageID #: 4026
`
`Apple Failed to Meet Its
`Burden
`
`Problems With Conflicts of Law Are Neutral:
`
`• Maxell agrees with Apple that this factor is neutral.
`
`
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