Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JAWBONE INNOVATIONS, LLC,
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`Case No. 6:21-CV-00984-ADA
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION TO
`TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 2 of 8
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`Jawbone Innovations, LLC’s (“JI”) opposition fails to identify any meaningful connection
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`between this case and this District, instead resorting to misrepresenting facts. JI also fails to
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`dispute the numerous witnesses and substantial evidence in NDCA. NDCA remains the
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`overwhelmingly more convenient forum and the case should be transferred there.
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`I.
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`THE PRIVATE INTEREST FACTORS STRONGLY FAVOR TRANSFER
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`Cost of Attendance for Willing Witnesses. The convenience for willingness witnesses
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`is the single most important factor, and the Federal Circuit has recognized the importance of
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`employee witnesses residing in the transferee venue. In re Apple Inc., 2021 WL 5291804, at *3
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`(Fed. Cir. Nov. 15, 2021). Apple identified 7 key technical, marketing, and financial witnesses, 6
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`in NDCA and one who moved from California to Massachusetts in July 2022. Mot. (Dkt. 38) at
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`3; Ex. 1 (
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` Decl.) ¶ 3. Apple provided detailed information about their relevance: “each
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`potential witness’s title, the title of the team they belong[] to, and the technology that team
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`supports.” VoIP-Pal.com, Inc. v. Meta Platforms, Inc., No. 2022 WL 3021522, *7 (W.D. Tex.
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`July 28, 2022); Mot. at 2-3; see also Ex. 2 (
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` Decl.) ¶ 3; Ex. 3 (
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` Decl.) ¶ 3; Ex. 4
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`(
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` Decl.) ¶ 3; Ex. 5 (
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` Decl.) ¶ 1; Ex. 6 (
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` Decl.) ¶ 3; Ex. 1 (
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` Decl.) ¶ 3.1
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`In contrast, there are no relevant witnesses in this District. JI cannot identify any of its
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`own witnesses who reside in WDTX. Opp. at 2, 10-11. And JI’s assertion that several Apple
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`employees in Austin “appear to have relevant information” relies upon mischaracterization and is
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`belied by the testimony of those employees. Opp. at 8. First, citing to an interrogatory response,
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`JI claims Apple “submits” that Austin employee
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` works on research and
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`1 Apple produced, and filed a motion for leave to supplement the record with, declarations from
`each witness identified by Mark Rollins. Dkt. 78; Dkt. 38-1. These supplemental declarations
`confirm the content of Mr. Rollins’ declaration and that he had spoken with them about their
`location, role and responsibilities. Dkt. 38-1; Exs. 1-6 (Supp. Decls.). The supplemental
`declarations on their own show that Apple does not have any relevant witness in WDTX.
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`1
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 3 of 8
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`development for certain acoustic and audio functionality. Id. JI, however, glaringly omits the
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`second half of the response, which makes clear that
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` work relates to
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`, not the accused
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`products. Opp., Ex. 14 at 10 (emphasis added). Second, JI mischaracterizes Apple witnesses’
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`testimony to create the false impression that they possess relevant knowledge. Opp. at 8-9.2 With
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`respect to
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`, JI claims he has knowledge of the Accused Products’ value. Opp. at 8.
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`But,
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`.
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`.3 Rather, he works on
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`With respect to
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`, JI claims she is relevant to “numerous issues” because she
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` which have nothing to do with this case. Id. at 14:6-15:3.
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`. Opp. at 8-9. But,
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` clarified that
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`. Id. at 16:20-17:11.
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`” Id. at 33:3-10.
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` also testified that she
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`2 JI claims that
` kept “a local copy of the source code” on her computer, ignoring that
`. See, e.g., Ex. 9
`she only has code that she works on,
`Tr.)
`at 33:10-20; 41:25-42:9; 61:18-62:3; 67:4-14. System boot-up is the short time when a Mac
`computer is first turned on and is irrelevant.
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`. Id. at 43:7-21.
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`3 JI also suggests that
`because
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` is knowledgeable of the value of the accused Beats products
`. Opp. at 8. However, his work
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` Ex. 7 (
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`Tr.) at 35:8-36:1; 42:16-43:6.
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`2
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 4 of 8
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` Ex. 8
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` Tr.) at 40:6-41:7.
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`Unable to identify any relevant witness in WDTX, JI turns to the personal preference of a
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`few JI witnesses (who reside outside of Texas) for WDTX over NDCA. JI points to its employees
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`.5 Opp. at
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`2-3. Neither these few witnesses’ personal preference nor the
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`witnesses, Michael Luna (former CTO of AliphCom) and Scott Kokka (a prosecution attorney),
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`change the calculus. “[T]here are numerous witnesses in the transferee venue and the only other
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`witnesses are far outside the plaintiff’s chosen forum.” In re Google LLC, No. 2021-170, 2021
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`WL 4427899, at *4-5 (Fed. Cir. Sept. 27, 2021). Given that key witnesses reside in NDCA and
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`none resides in WDTX, this factor heavily favors transfer. See Apple, 2021 WL 5291804, at *3
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`(weighing this factor strongly in favor of transfer since “Apple identified several potential party
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`and non-party witnesses residing in [NDCA]” and none in WDTX).
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`Compulsory Process Availability. JI does not contest that Apple identified 9 relevant
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`third-party witnesses subject to NDCA’s subpoena power, including named inventors, patent
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`prosecutors, and former AliphCom personnel. Mot. at 4-5. Moreover, JI does not identify any
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`third-party witness in WDTX. See Opp. at 11-13. Thus, other than one prosecution counsel for
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`the asserted patents, there is no third-party witness in this Court’s subpoena power. This factor
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`strongly favors transfer.
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`4 JI speculates, “it is highly likely that co-workers of the above-listed employees” are also located
`in WDTX. Opp. at 9.
`’ testimony belies this speculation:
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` Tr.) at 19:4-20:18; 55:2-8.
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`. Ex. 8 (
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`5 The convenience of witnesses outside the transferee and the transferor forums should not be given
`much weight. See In re TracFone Wireless, Inc., 852 F. App’x 537, 539-40 (Fed. Cir. 2021).
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`3
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 5 of 8
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`Access to Sources of Proof. The bulk of the evidence will come from Apple. Apples
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`creates and maintains most of the relevant technical, financial, marketing and licensing documents
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`in NDCA. Mot. at 8; Exs. 1-6 (Suppl. Decls.); Dkt. 38-1, ¶¶ 9-12, 15-17. JI’s argument that
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` (Opp. at 6-7; Opp., Ex. 14 at
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`17), is irrelevant. The relevant inquiry is where relevant documents are “created and maintained,”
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`and that is NDCA, not Texas. In re Google LLC, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15,
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`2021); see also Google LLC, 2021 WL 4427899, at *6 (that Google maintains data center outside
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`the transferee venue does not weigh against transfer). Additionally, the persons with access
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`permissions to the relevant electronic technical documents (including source code) are primarily
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`located in NDCA and none are in WDTX. Mot. at 8-9; Exs. 1-6 (Suppl. Decls.). These custodians
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`also keep electronic files on their local computers and physical records in their workplaces.6 The
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`accused features are also developed and tested primarily in NDCA. Mot. at 2; Exs. 1-6 (Suppl.
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`Decls.). In short, no party has identified any relevant Apple evidence in WDTX.
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`JI vaguely claims that its Waco office has documents
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` Opp. at 6. Nothing suggests these unspecified
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`products are relevant. Id. In fact, JI does not allege that they embody the Asserted Patents. Id.;
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`see also Ex. 10 (JI’s Rog Resp.) at 16 (identifying only AliphCom’s defunct products as practicing
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`products). Moreover, all of JI’s relevant custodians are located outside of WDTX, Opp. at 2, so
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`the majority of their relevant documents are likely maintained outside of WDTX as well.
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`Also, third-party witnesses in NDCA—including inventors, the former AliphCom CEO
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`and CTO, and prosecuting attorneys—will have evidence of damages, invalidity, and
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`6 Apple, 2021 WL 5291804, at *2 (physical location of electronic documents is relevant as the
`district court “should have compared the ease of access in” WDTX to the ease of access in NDCA).
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`4
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 6 of 8
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`infringement. Mot. at 4-5. Conversely, no third parties with relevant information has been
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`identified in WDTX. Id.; Opp. at 2-3. Thus, access to sources of proof strongly favors transfer.
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`All Other Practical Problems. This case was in its earliest stage when Apple filed its
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`Motion. JI’s action against Google in this District does not weigh against transfer, since Google
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`has also moved to transfer to NDCA and different products are involved in these matters. See Mot.
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`at 12-13. JI’s action against Amazon in EDTX has been transferred to NDCA. Ex. 12.
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`II.
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`THE PUBLIC INTEREST FACTORS ALSO FAVOR TRANSFER
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`Local Interest. JI’s focus on Apple’s general presence in Austin misses the point. Opp.
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`at 3-4. Apple’s general contacts with WDTX “are untethered from the lawsuit.” VoIP-Pal.com,
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`Inc., 2022 WL 3021522 at *9-10. JI does not contest that Apple designed, developed,
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`implemented, and tested the accused features primarily in NDCA, not in WDTX. Mot. at 8. Not
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`a single relevant witness is located in WDTX. See Opp. at 2-3. JI’s best effort is to allege some
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`indeterminate “documents” and “products” that, even if they exist in this District, are at best
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`marginally relevant. Id. at 6. This is unsurprising as JI has only been in Waco since the month
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`before it filed suit (Opp., Ex. 1 ¶ 3) and
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`(Opp. at 2). JI’s “‘recent and ephemeral’ presence” in WDTX should not be accorded “much
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`weight, if any at all.” VoIP-Pal.com, 2022 WL 3021522 at *10. In contrast, development of the
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`accused features and the inventions in NDCA strongly favors transfer.
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`Court Congestion. This factor is neutral. Mot. at 14-15. JI cites to an order by one NDCA
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`judge discussing NDCA’s caseload, but the judge’s source is a website that explains that WDTX
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`is also in a judicial emergency with a weighted caseload by judge of 850—higher than NDCA’s
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`weighted caseload of 816. Ex. 11 (Judicial Emergencies) at 1-2.
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`Accordingly, Apple respectfully requests that the Court transfer this action to NDCA.
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`5
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 7 of 8
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`Dated: September 21, 2022
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`FISH & RICHARDSON P.C.
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`By:
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`
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`/s/ Qiuyi Wu
`J. Stephen Ravel
`Texas Bar No. 16584975
`steve.ravel@kellyhart.com
`KELLY HART & HALLMAN LLP
`303 Colorado, Suite 2000
`Austin, Texas 78701
`Telephone: (512) 495-6429
`Facsimile: (512) 495-6401
`
`Ricardo J. Bonilla
`Texas Bar No. 24082704
`rbonilla@fr.com
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`Telephone: (214) 747-5070
`Facsimile: (214) 747-2091
`
`Benjamin C. Elacqua
`Texas Bar No. 24055443
`elacqua@fr.com
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, Texas 77010
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`
`Betty H. Chen
`Texas Bar No. 24056720
`bchen@fr.com
`Katherine D. Prescott
`(Pro Hac Vice)
`prescott@fr.com
`Jeanel N. Sunga
`(Pro Hac Vice)
`sunga@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 400
`Redwood City, CA 94063
`Telephone: (650) 839-5067
`Facsimile: (650) 839-5071
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`
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`6
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`Case 6:21-cv-00984-ADA Document 101 Filed 09/28/22 Page 8 of 8
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`Daniel R. Gopenko
`DC Bar No. 1018019
`gopenko@fr.com
`FISH & RICHARDSON P.C.
`1000 Maine Avenue, SW, Suite 1000
`Washington, DC 20024
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`Qiuyi Wu
`(Pro Hac Vice)
`qwu@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
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`
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`COUNSEL FOR DEFENDANT
`APPLE INC.
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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 21, 2022, to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system.
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`/s/ Qiuyi Wu
`Qiuyi Wu
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`7
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