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Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 1 of 9
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`JAWBONE INNOVATIONS, LLC,
`
`Case No. 6:21-CV-00984-ADA
`
`
`
`v.
`
`APPLE INC.,
`
`Plaintiff(s),
`
`Defendant(s).
`
`
`
`
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`DEFENDANT APPLE INC.’S OPPOSED MOTION FOR LEAVE TO SUPPLEMENT
`THE RECORD ON APPLE’S MOTION TO TRANSFER
`
`

`

`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 2 of 9
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`I.
`
`INTRODUCTION
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`Pursuant to Rule 16(b) of the Federal Rules of Civil Procedure, Apple respectfully requests
`
`leave to supplement the record on its motion to transfer venue, (Dkt. No. 38) (“Transfer Motion”),
`
`to include declarations from the Apple employees already identified by Mark Rollins in his
`
`declaration filed in support of the Transfer Motion (Dkt. 38-1, “Rollins Declaration”). Apple
`
`seeks leave to submit these declarations to address the Court’s guidance and concerns related to
`
`Mark Rollins’s declaration in its Order granting Apple’s Motion to Transfer in Scramoge
`
`Technology Ltd. v. Apple Inc., No. 21-cv-00579, ECF No. 77 (May 17, 2022, W.D.T.X.)
`
`(“Scramoge”).
`
`Apple respectfully submits that there is good cause for this supplementation because (1)
`
`the 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
`
`witnesses provide is relevant to the venue analysis; (3) Jawbone Innovations will not be unfairly
`
`prejudiced because: (a) Apple already identified these witnesses in its Transfer Motion and Rollins
`
`Declaration, (b) these witnesses’ declarations are analogous in scope to the Rollins Declaration,
`
`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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`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
`
`Jawbone Innovations.
`
`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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`
`
`
`
`

`

`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 3 of 9
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`II.
`
`BACKGROUND
`
`On May 2, 2022, Apple moved to transfer this case to the Northern District of California
`
`under 35 U.S.C. § 1404(a). In its Transfer Motion, Apple relied on the Rollins Declaration to
`
`establish certain facts, such as the roles and locations of relevant witnesses and their teams, and
`
`the locations of various categories of documents and other evidence. On May 13, 2022, Jawbone
`
`Innovations served written venue discovery on Apple, which, pursuant to the Court’s OGP,
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`extended the date for Jawbone Innovations’s response to the Transfer Motion to July 25, 2022.
`
`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
`
`Good cause is required to supplement a motion record. See FED. R. CIV. P. 16(b)(4); Al-
`
`Khawaldeh v. Tackett, No. 1:20-CV-01079-RP, 2021 WL 2322930 (W.D. Tex. June 7, 2021)
`
`(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
`
`v. City of Shreveport, 920 F.3d 278, 287 (5th Cir. 2019) (applying good cause standard to motion
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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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`
`
`2
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`

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`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 4 of 9
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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.
`
`A.
`
`Apple’s Explanation for the Timing of the Requested Relief Supports Good
`Cause for the Requested Supplementation
`
`Apple timely filed its Transfer Motion on May 2, 2022, relying upon the accompanying
`
`Rollins Declaration to establish certain facts concerning the roles, activities, and locations of
`
`relevant witnesses and their teams, and the locations of relevant documents. Approximately two
`
`weeks later, this Court issued its Order in Scramoge that set forth concerns regarding a declaration
`
`of Mr. Rollins. That Scramoge Order provided guidance about declaration testimony that would
`
`assist the Court in determining motions to transfer venue.
`
`After receiving the Scramoge Order, Apple acted promptly to obtain and seek leave to
`
`submit declarations from the Apple employees that Mr. Rollins identified in the Rollins
`
`Declaration—with each employee testifying to information similar in scope to that which Mr.
`
`Rollins set forth in his declaration. In particular, Apple promptly evaluated the effect and impact
`
`of the Scramoge Order on the present Transfer Motion and Rollins Declaration to determine
`
`whether supplementation here was needed; scheduled time with each of the witnesses submitting
`
`supplemental declarations to prepare, review, and finalize their declarations; contacted opposing
`
`counsel to meet and confer on the present motion; and diligently prepared and filed the present
`
`motion. Jawbone Innovations has long been aware of the identity of the declarants, and they will
`
`be available for deposition, if necessary. Apple is also willing to accommodate a further extension
`
`to Jawbone Innovations’s deadline to oppose the Transfer Motion.
`
`B.
`
`The Importance of the Evidence Supports Good Cause for the Requested
`Supplementation
`
`To prevail on its motion to transfer, Apple bears the burden to establish that the Northern
`
`District of California is the clearly more convenient venue. In re Volkswagen of Am., Inc., 545
`
`
`
`3
`
`

`

`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 5 of 9
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`F.3d 304, 312-15 (5th Cir. 2008) (“Volkswagen II”). The convenience of willing witnesses is the
`
`most important factor in the transfer analysis. See In re: Apple Inc., 818 F. App’x 1001, 1003
`
`(Fed. Cir. June 16, 2020). The location of relevant records is also an important factor. Id.
`
`Apple sought to provide evidence concerning those factors via the Rollins Declaration;
`
`however, now that Apple is on notice that the Court will credit “Mr. Rollins’s declaration only for
`
`its unrebutted statements” (Scramoge Order at 3), Apple risks being left without a means to
`
`substantiate the testimony of Mr. Rollins with the evidence that the Court’s Scramoge Order
`
`explained will be most helpful to the Court in establishing the location of the likely Apple
`
`witnesses and records that Mr. Rollins discussed in his declaration. The importance of the
`
`requested supplementation supports a finding of good cause.
`
`C.
`
`Jawbone Innovations Will Not Be Prejudiced by the Requested
`Supplementation
`
`For several independent reasons, Jawbone Innovations will not be prejudiced by the
`
`requested supplementation.
`
`First, each of the declarations is from a witness already identified in the Rollins Declaration
`
`and relied on in the Transfer Motion. That these specific witnesses are relevant to the suit and the
`
`Transfer Motion is information known to Jawbone Innovations since the filing of Apple’s Transfer
`
`Motion.
`
`Second, the information in the supplemental declarations is consistent with and the same
`
`in scope as the information already provided in the Rollins Declaration. In that respect, these
`
`declarations do not provide new evidence, but instead supplement the evidence that has already
`
`been submitted and made known to Jawbone Innovations, who has been able to craft its venue
`
`discovery strategy around that already-provided information.
`
`
`
`4
`
`

`

`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 6 of 9
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`Third, because venue discovery is ongoing and remains open until August 11, 2022, and
`
`because Jawbone Innovations has not yet responded to Apple’s Transfer Motion, Jawbone
`
`Innovations has time and opportunity to address these supplemental declarations. To date,
`
`Jawbone Innovations has not yet sought to depose any of the Apple witnesses identified in the
`
`Rollins Declaration. Since the supplemental declarations are the same in scope as the information
`
`provided in the Rollins Declaration, Jawbone Innovations’s strategy not to take venue-related
`
`depositions should not be impacted by the inclusion of these supplemental declarations.
`
`Nevertheless, there is sufficient time remaining in venue discovery for Jawbone Innovations to
`
`depose these individuals, if it chooses to do so, and to alleviate any potential prejudice to Jawbone
`
`Innovations. Apple agrees to make each of the declarants available for deposition within the venue
`
`discovery limits should Jawbone Innovations request their depositions, and to accommodate an
`
`extension to Jawbone Innovations’s deadline to oppose the Transfer Motion.
`
` In summary, the additional declarations from witnesses Mr. Rollins already identified in
`
`his declaration will not unduly prejudice Jawbone Innovations, but instead will best enable the
`
`parties to present the relevant facts and evidence to the Court for adjudication.
`
`D.
`
`A Continuance Is Unnecessary Given the Current Procedural Posture
`
`As noted above, Jawbone Innovations’s response to the Transfer Motion is not due until
`
`after the completion of venue discovery, which is still in progress. Specifically, venue discovery
`
`closes on August 11, and Jawbone Innovations’s 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’s opposition deadline. In
`
`any event, a continuance would not affect the overall trajectory of this case. Under this Court’s
`
`Second Amended Standing Order regarding Motions for Inter-District Transfer—which applies to
`
`
`
`5
`
`

`

`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 7 of 9
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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
`
`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.
`
`
`
`Dated: August 2, 2022
`
`FISH & RICHARDSON P.C.
`
`By:
`
`
`/s/ Ricardo J. Bonilla
`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)
`
`
`
`6
`
`

`

`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 Page 8 of 9
`
`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
`
`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
`
`
`
`COUNSEL FOR DEFENDANT
`APPLE INC.
`
`
`
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`
`7
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`

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`Case 6:21-cv-00984-ADA Document 80 Filed 08/16/22 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.
`
`
`
`
`
`
`
`/s/ Ricardo J. Bonilla
`Ricardo J. Bonilla
`
`
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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 August 2, 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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`
`
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`
`
`/s/ Ricardo J. Bonilla
`Ricardo J. Bonilla
`
`
`
`8
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`

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