Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 1 of 9
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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(s),
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`Defendant(s).
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S OPPOSED RENEWED MOTION FOR LEAVE TO
`SUPPLEMENT THE RECORD ON APPLE’S MOTION TO TRANSFER
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`Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 2 of 9
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`I.
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`INTRODUCTION
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`Pursuant to Rule 16(b) of the Federal Rules of Civil Procedure, Apple respectfully requests
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`leave to supplement the record on its motion to transfer venue, (Dkt. No. 38) (“Transfer Motion”),
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`to include declarations from the Apple employees already identified by Mark Rollins in his
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`declaration filed in support of the Transfer Motion (Dkt. 38-1, “Rollins Declaration”). Dkt. 78
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`(“Original Motion for Leave”).1 Apple seeks leave to submit these declarations to address the
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`Court’s guidance and concerns related to Mark Rollins’s declaration in its Order granting Apple’s
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`Motion to Transfer in Scramoge Technology Ltd. v. Apple Inc., No. 21-cv-00579, ECF No. 77
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`(May 17, 2022, W.D.T.X.) (“Scramoge”).
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`Apple respectfully submits that there is good cause for this supplementation because (1) the
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`Court’s Order in Scramoge issued after Apple filed its Transfer Motion in this case, and Apple
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`believes that, in light of the statements in that Order, the Court would benefit from hearing directly
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`from the Apple employees identified in the Rollins Declaration; (2) the information that these
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`witnesses provide is relevant to the venue analysis; (3) Jawbone Innovations will not be unfairly
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`prejudiced because: (a) Apple already identified these witnesses in its Transfer Motion and Rollins
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`Declaration, (b) these witnesses’ declarations are analogous in scope to the Rollins Declaration,
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`and (c) Apple recently produced these declarations to Jawbone Innovations as part of venue
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`discovery, which remains open, thereby affording Jawbone Innovations time to depose any one or
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`1 On September 15, 2022, the Court granted Apple’s Transfer Motion as unopposed. Dkt. 93. In
`that Order, the Court also denied Apple’s Original Motion for Leave as moot. Id. at 2. On
`September 20, 2022, the Court granted Jawbone Innovations’ Motion for Reconsideration and
`vacated its transfer order. Dkt. 95. The September 20, 2022 Order did not address Apple’s
`Original Motion for Leave, which remained denied as moot. Id. Therefore, Apple files this
`Renewed Motion for Leave to Supplement the Record on Apple’s Motion to Transfer. The parties
`had already fully briefed the Original Motion for Leave: Apple filed the Original Motion for Leave
`on August 2, 2022 (Dkt. 78); Jawbone Innovations filed its opposition on August 16, 2022
`(Dkt. 82); and Apple filed its reply on August 23, 2022 (Dkt. 84). No additional briefing is
`required for the Court to resolve the Renewed Motion for Leave to Supplement the Record on
`Apple’s Motion to Transfer.
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`1
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`Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 3 of 9
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`more of these individuals before its responsive venue brief is due, if Jawbone Innovations chooses
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`to do so; and (4) a continuance is not necessary, but is available to cure any potential prejudice to
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`Jawbone Innovations.
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`In accordance with the Western District of Texas Local Rules, Apple has attached the
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`declarations it seeks to supplement as exhibits to this motion. LR CV-7(d).
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`II.
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`BACKGROUND
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`On May 2, 2022, Apple moved to transfer this case to the Northern District of California
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`under 35 U.S.C. § 1404(a). In its Transfer Motion, Apple relied on the Rollins Declaration to
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`establish certain facts, such as the roles and locations of relevant witnesses and their teams, and
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`the locations of various categories of documents and other evidence. On May 13, 2022, Jawbone
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`Innovations served written venue discovery on Apple, which, pursuant to the Court’s OGP,
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`extended the date for Jawbone Innovations’ response to the Transfer Motion to July 25, 2022.
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`Since that discovery was served, the parties have been engaging in venue-related discovery. On
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`July 26, 2022, Apple produced and served on Jawbone Innovations the declarations attached
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`hereto. Apple anticipates that venue discovery will be completed by August 11, 2022. To date,
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`Jawbone Innovations has not requested any deposition of Mr. Rollins or the witnesses identified
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`in the Rollins Declaration.
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`III. THERE IS GOOD CAUSE TO GRANT LEAVE TO SUPPLEMENT
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`Good cause is required to supplement a motion record. See FED. R. CIV. P. 16(b)(4); Al-
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`Khawaldeh v. Tackett, No. 1:20-CV-01079-RP, 2021 WL 2322930 (W.D. Tex. June 7, 2021)
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`(holding that Rule 16(b)(4) governed request to supplement evidence in opposition to summary
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`judgement motion, and granting leave to supplement) (citing Shepherd ex rel. Estate of Shepherd
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`v. City of Shreveport, 920 F.3d 278, 287 (5th Cir. 2019) (applying good cause standard to motion
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`2
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`Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 4 of 9
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`to supplement briefing)). Good cause is evaluated based on the assessment of four factors: (1) the
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`explanation for the failure to timely offer the evidence; (2) the importance of the evidence; (3)
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`potential prejudice in allowing the evidence into the record; and (4) the availability of a
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`continuance to cure such prejudice. See E.E.O.C. v. Service Temps Inc., 679 F.3d 323, 333-34
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`(5th Cir. 2012) (applying factors to proposed pleading amendment). For the reasons set forth
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`below, all four factors support good cause to permit the requested supplementation.
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`A.
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`Apple’s Explanation for the Timing of the Requested Relief Supports Good
`Cause for the Requested Supplementation
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`Apple timely filed its Transfer Motion on May 2, 2022, relying upon the accompanying
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`Rollins Declaration to establish certain facts concerning the roles, activities, and locations of
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`relevant witnesses and their teams, and the locations of relevant documents. Approximately two
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`weeks later, this Court issued its Order in Scramoge that set forth concerns regarding a declaration
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`of Mr. Rollins. That Scramoge Order provided guidance about declaration testimony that would
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`assist the Court in determining motions to transfer venue.
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`After receiving the Scramoge Order, Apple acted promptly to obtain and seek leave to
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`submit declarations from the Apple employees that Mr. Rollins identified in the Rollins
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`Declaration—with each employee testifying to information similar in scope to that which Mr.
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`Rollins set forth in his declaration. In particular, Apple promptly evaluated the effect and impact
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`of the Scramoge Order on the present Transfer Motion and Rollins Declaration to determine
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`whether supplementation here was needed; scheduled time with each of the witnesses submitting
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`supplemental declarations to prepare, review, and finalize their declarations; contacted opposing
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`counsel to meet and confer on the present motion; and diligently prepared and filed the present
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`motion. Jawbone Innovations has long been aware of the identity of the declarants, and they will
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`Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 5 of 9
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`be available for deposition, if necessary. Apple is also willing to accommodate a further extension
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`to Jawbone Innovations’ deadline to oppose the Transfer Motion.
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`B.
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`The Importance of the Evidence Supports Good Cause for the Requested
`Supplementation
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`To prevail on its motion to transfer, Apple bears the burden to establish that the Northern
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`District of California is the clearly more convenient venue. In re Volkswagen of Am., Inc., 545
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`F.3d 304, 312-15 (5th Cir. 2008) (“Volkswagen II”). The convenience of willing witnesses is the
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`most important factor in the transfer analysis. See In re: Apple Inc., 818 F. App’x 1001, 1003
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`(Fed. Cir. June 16, 2020). The location of relevant records is also an important factor. Id.
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`Apple sought to provide evidence concerning those factors via the Rollins Declaration;
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`however, now that Apple is on notice that the Court will credit “Mr. Rollins’s declaration only for
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`its unrebutted statements” (Scramoge Order at 3), Apple risks being left without a means to
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`substantiate the testimony of Mr. Rollins with the evidence that the Court’s Scramoge Order
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`explained will be most helpful to the Court in establishing the location of the likely Apple
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`witnesses and records that Mr. Rollins discussed in his declaration. The importance of the
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`requested supplementation supports a finding of good cause.
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`C.
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`Jawbone Innovations Will Not Be Prejudiced by the Requested
`Supplementation
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`For several independent reasons, Jawbone Innovations will not be prejudiced by the
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`requested supplementation.
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`First, each of the declarations is from a witness already identified in the Rollins Declaration
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`and relied on in the Transfer Motion. That these specific witnesses are relevant to the suit and the
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`Transfer Motion is information known to Jawbone Innovations since the filing of Apple’s Transfer
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`Motion.
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`Second, the information in the supplemental declarations is consistent with and the same
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`in scope as the information already provided in the Rollins Declaration. In that respect, these
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`declarations do not provide new evidence, but instead supplement the evidence that has already
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`been submitted and made known to Jawbone Innovations, who has been able to craft its venue
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`discovery strategy around that already-provided information.
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`Third, because venue discovery is ongoing and remains open until August 11, 2022, and
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`because Jawbone Innovations has not yet responded to Apple’s Transfer Motion, Jawbone
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`Innovations has time and opportunity to address these supplemental declarations. To date,
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`Jawbone Innovations has not yet sought to depose any of the Apple witnesses identified in the
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`Rollins Declaration. Since the supplemental declarations are the same in scope as the information
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`provided in the Rollins Declaration, Jawbone Innovations’ strategy not to take venue-related
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`depositions should not be impacted by the inclusion of these supplemental declarations.
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`Nevertheless, there is sufficient time remaining in venue discovery for Jawbone Innovations to
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`depose these individuals, if it chooses to do so, and to alleviate any potential prejudice to Jawbone
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`Innovations. Apple agrees to make each of the declarants available for deposition within the venue
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`discovery limits should Jawbone Innovations request their depositions, and to accommodate an
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`extension to Jawbone Innovations’ deadline to oppose the Transfer Motion.
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` In summary, the additional declarations from witnesses Mr. Rollins already identified in
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`his declaration will not unduly prejudice Jawbone Innovations, but instead will best enable the
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`parties to present the relevant facts and evidence to the Court for adjudication.
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`D.
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`A Continuance Is Unnecessary Given the Current Procedural Posture
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`As noted above, Jawbone Innovations’ response to the Transfer Motion is not due until
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`after the completion of venue discovery, which is still in progress. Specifically, venue discovery
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`closes on August 11, and Jawbone Innovations’ response is due August 25. Therefore, no
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`continuance is needed. Nevertheless, to extinguish any possible prejudice to Jawbone Innovations,
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`Apple has offered to accommodate an extension to Jawbone Innovations’ opposition deadline. In
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`any event, a continuance would not affect the overall trajectory of this case. Under this Court’s
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`Second Amended Standing Order regarding Motions for Inter-District Transfer—which applies to
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`this matter—fact discovery will commence on July 28 regardless of whether a continuance is or is
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`not granted.
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`IV. CONCLUSION
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`For the reasons set forth above, Apple respectfully requests leave to submit the
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`supplemental declarations attached as Exhibits 1-6 to this motion in further support of Apple’s
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`pending motion to transfer.
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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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`/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
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`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
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`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
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`Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 8 of 9
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`Betty H. Chen
`Texas Bar No. 24056720
`bchen@fr.com
`Katherine D. Prescott
`(Pro Hac Vice)
`prescott@fr.com
`Jeanel 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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`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
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`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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`COUNSEL FOR DEFENDANT
`APPLE INC.
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`Case 6:21-cv-00984-ADA Document 102 Filed 09/28/22 Page 9 of 9
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(g), counsel for Apple has conferred with counsel for Jawbone
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`Innovations, LLC via multiple email exchanges in a good-faith effort to resolve the matter
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`presented herein. Jawbone Innovations opposes Apple’s requested relief.
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`/s/ Qiuyi Wu
`Qiuyi Wu
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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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`8
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