Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 1 of 7
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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 REPLY IN SUPPORT OF ITS MOTION FOR LEAVE TO
`SUPPLEMENT THE RECORD ON APPLE’S MOTION TO TRANSFER
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`Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 2 of 7
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`Good cause exists to grant Apple’s Motion for Leave to Supplement the Record on Apple’s
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`Motion to Transfer (Dkt. 78, “Motion”) to include declarations from the Apple employees already
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`identified in Apple’s Motion to Transfer (Dkt. 38, “Transfer Motion”). Apple’s requested
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`supplementation is timely, important to the venue inquiry, and will not unfairly prejudice Jawbone
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`Innovations. Jawbone Innovations fails to rebut these showings, and has had ample opportunity
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`to seek discovery and provide any relevant evidence related to transfer. Moreover, this Court has
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`granted Apple’s similar motions in other cases, where Apple also sought leave to supplement the
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`record on its transfer motions with additional declarations after the issuance of the Scramoge
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`Order. See Parus Holdings Inc. v. Apple Inc., Civil Action No. 6:21-cv-00968-ADA-DTG (W.D.
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`Tex. Aug. 22, 2022); Smart Mobile Technologies LLC v. Apple Inc., 6:21-cv-00603-ADA-DTG
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`(W.D. Tex. July 26, 2022). The Court should do the same here.
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`I.
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`APPLE’S REQUEST IS TIMELY
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`Jawbone Innovations does not dispute that the Scramoge Order issued after Apple filed the
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`Transfer Motion. Instead, Jawbone Innovations contends that Apple should have submitted these
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`supplemental declarations at the time Apple filed the Transfer Motion. Opp’n (Dkt. 82) at 2. Prior
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`to Scramoge, however, Apple had no reason to know of the Court’s specific concerns regarding
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`Apple’s use of Mr. Rollins as a corporate declarant, as this Court had previously relied on similar
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`testimony from Mr. Rollins on various occasions. See, e.g., LoganTree LP v. Apple Inc., 2022 WL
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`1491097 at *6 (W.D. Tex. May 11, 2022) (granting Apple’s motion to transfer and finding that
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`“Mr. Rollins has sufficiently explained the relevant knowledge that [Apple’s identified] witnesses
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`possess”); Cub Club Inv., LLC v. Apple, Inc., No. 20-cv-856-ADA, Dkt. No. 28 (W.D. Tex. Sept.
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`7, 2021) (granting Apple’s motion to transfer to N.D. Cal. and relying on facts provided by Mr.
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`Rollins). The Federal Circuit likewise has relied on Mr. Rollins’s declarations. See, e.g., In re
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`Apple Inc., No. 2022-128, 2022 WL 1196768, at *4 (Fed. Cir. April 22, 2022) (“Apple submitted
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`1
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`Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 3 of 7
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`a sworn declaration stating that ‘working files, electronic documents, and any hard copy
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`documents concerning the Accused Features reside on local computers and/or servers either
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`located in or around [other geographic areas.]’”); In re Apple Inc., No. 2021-181, 2021 WL
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`5291804, at *2 (Fed. Cir. Nov. 15, 2021) (“Apple’s sworn declaration [from Mark Rollins] and
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`deposition testimony make clear that essentially all of its source code and documentary evidence
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`relevant to this action are maintained in the Northern District of California”).
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`Contrary to Jawbone Innovations’s argument, Apple acted promptly and diligently once it
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`received the Scramoge Order on May 17, 2022. Opp’n at 2-3. Apple produced the six
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`supplemental declarations on July 26, 2022, and it filed the present Motion on August 2, 2022.
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`Mot. at 2. Jawbone Innovations ignores the significant amount of time required for Apple to
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`evaluate the effect of the Scramoge Order on the present case, schedule time with each of the six
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`witnesses (all of whom are full-time Apple employees) to prepare, review, and finalize their
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`declarations, contact opposing counsel to confer on the Motion, and prepare and file the Motion.
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`Moreover, venue discovery has been extended to August 11, 2022, and, currently, Jawbone
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`Innovations’s opposition is not due until August 25.1 Thus, there was no undue delay, as Apple
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`diligently prepared the declarations to provide an alternative form of the evidence it already
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`submitted to support the Transfer Motion, and it did so within two and a half months of receiving
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`the Scramoge Order.
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`II.
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`THE REQUESTED SUPPLEMENTATION IS IMPORTANT
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`Jawbone Innovations argues that the supplemental declarations are not important because
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`the information contained therein is “merely cumulative of the Rollins Declaration.” Opp’n at 3.
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`1 The parties intend to file another request to extend venue discovery shortly to accommodate for
`three 30(b)(1) depositions taken by Jawbone Innovations.
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`2
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`Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 4 of 7
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`Jawbone Innovations’s argument ignores this Court’s prior ruling. The proposed supplementation
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`directly addresses the Court’s concerns with Apple’s use of a corporate declaration as set forth in
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`the Scramoge Order. The supplemental declarations, from the precise employees Mr. Rollins
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`spoke with in preparing his original declaration, confirm the testimony that Mr. Rollins provided
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`on behalf of Apple and allow the Court (and Jawbone Innovations) to benefit from receiving the
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`direct personal knowledge from the Apple witnesses identified in Mr. Rollins’ declaration—
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`precisely what the Court in Scramoge indicated it required.
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`III.
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`JAWBONE INNOVATIONS WILL NOT BE UNFAIRLY PREJUDICED
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`The only “prejudice” Jawbone Innovations identifies is that it will have to “respond to these
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`new witnesses and facts,” but it does not identify any additional discovery or evidence it allegedly
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`would need to respond. See Opp’n at 3. Moreover, that argument is disingenuous and contradicts
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`both the record and Jawbone Innovations’s claim that the supplemental declarations are
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`“cumulative.” Id. The supplemental declarations are consistent with and the same in scope as
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`what is already included in the Transfer Motion, so there are no “new witnesses or facts” that
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`Jawbone Innovations would need to address. Mot. at 4. Indeed, Apple already disclosed all six
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`witnesses by name, location, and job description in its Transfer Motion filed on May 2, 2022.
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`Transfer Motion (Dkt. 38) at 2-3; Rollins Declaration (Dkt. 38-1) at ¶¶ 9-12, 15-17. Jawbone
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`Innovations did not seek to depose any of these six witnesses, despite having the opportunity to do
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`so both before and after the present Motion was filed. Jawbone Innovations instead elected to take
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`depositions of individuals not identified in Apple’s Transfer Motion or declarations. Thus,
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`Jawbone Innovations cannot credibly argue that the proposed supplementation would unfairly
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`prejudice its ability to depose these witnesses or seek other relevant discovery, when it already
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`made the strategic decision not to do so.
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`3
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`Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 5 of 7
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`Had Jawbone Innovations identified any actual unfair prejudice or additional discovery
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`required, a short continuance of venue discovery would resolve it. See, e.g., In re Apple, Inc., 979
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`F.3d 1332, 1337 (Fed. Cir. 2020) (explaining that “once a party files a transfer motion, disposing
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`of that motion should unquestionably take top priority”). But because Jawbone Innovations
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`already agreed not to serve any new venue discovery requests and chose to take depositions of
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`three entirely different Apple employees, even though it was fully aware of Apple’s intention to
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`file the present Motion, any claim of prejudice or need for additional discovery would ring hollow.
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`Dkt. 71 (Joint Stipulation to Extend Venue Discovery Deadlines). Jawbone Innovations should
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`not be rewarded with significant continuance of venue discovery to take discovery it already made
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`the strategic decision to forgo. Jawbone Innovations has not yet filed its opposition to Apple’s
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`Transfer Motion and accordingly still has the opportunity to fully respond to the supplemental
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`declarations. Thus, Jawbone Innovations will not be unfairly prejudiced if the Court allows
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`Apple’s requested supplementation.
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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 the Motion in further support of Apple’s
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`pending motion to transfer.
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`Dated: August 23, 2022
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`FISH & RICHARDSON P.C.
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`By:
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`/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
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`4
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`Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 6 of 7
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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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`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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`5
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`Case 6:21-cv-00984-ADA Document 84 Filed 08/23/22 Page 7 of 7
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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 23, 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/ Ricardo J. Bonilla
`Ricardo J. Bonilla
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`6
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