Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

Northern District of California, cand-4:2015-cv-03755

LETTER addressed to Judge Richard J. Sullivan from Patrick E. King dated 12/15/2014 re: Motion to Transfer. Document filed by Apple, Inc.

Interested in this case?

Current View

Full Text

SIMPSON THACHER & BARTLETT LLP 2475 HANOVER STREET PALO ALTO, CA 94304 (650) 251-5000 FACSIMILE (650) 251-5002 DIRECT DIAL NUMBER E-MAIL ADDRESS (650) 251-5115 pking@stblaw.com VIA ECF AND EMAIL (SULLIVANNYSDCHAMBERS@NYSD.USCOURTS.GOV) December 15, 2014 Re: IXI Mobile (R&D) Ltd. and IXI IP, LLC v. Apple Inc., 14-cv-7954 (RJS) Honorable Richard J. Sullivan United States District Judge Thurgood Marshall United States Courthouse 40 Foley Square New York, NY 10007 Dear Judge Sullivan: This firm represents Defendant Apple Inc. ("Apple") in the above captioned action (the "Action"). Apple respectfully requests a pre-motion conference to seek permission to file a motion to transfer this Action to the Northern District of California pursuant to 28 U.S.C. § 1404(a), or in the alternative, authorization from the Court to file the motion without a pre-motion conference. This letter sets forth the basis for Apple's anticipated motion. The Northern District of California is the proper venue because this Action has overwhelming connections to Northern California and virtually no connection to New York. In a transfer analysis, the Court must first determine whether an action could have been brought in the proposed transferee district (a question not in dispute, as Apple is headquartered there) and then typically considers the following factors: "(1) the convenience of witnesses; (2) the location of relevant documents and relative ease of access to sources of proof; (3) the convenience of the parties; (4) the locus of the operative facts; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) the forum's familiarity with the governing law; (8) the weight accorded the plaintiff's choice of forum; and (9) trial efficiency and the interests of justice, based on the totality of the circumstances." France Telecom S.A. v. Marvell Semiconductor, Inc., No. 12 CIV. 4986 (JSR), 2012 WL 6808527, at *1 (S.D.N.Y. Dec. 28, 2012) (internal citation omitted). BEIJING HONG KONG HOUSTON LONDON LOS ANGELES NEW YORK S ÃO P A U L O SEOUL TOKYO WASHINGTON, D.C. SIMPSON THACHER & BARTLETT LLP Honorable Richard J. Sullivan -2- December 15, 2014 Plaintiffs' connections to this district are both tenuous and contrived, and thus their choice of forum should be given little weight. Specifically, there are two plaintiffs in this case: the first, IXI Mobile (R&D) Ltd. ("IXI R&D"), is the Israel-based research and development arm of a company previously headquartered in Northern California, and Apple has not been able to identify any ties between the company and New York. The second plaintiff, IXI IP, LLC ("IXI IP"), is a patent assertion entity that received the patents from IXI R&D less than two weeks before filing its first suit in this district and promptly licensed the patents back to IXI R&D. Apple's initial investigation suggests that IXI IP has no operations in New York. In their initial disclosures, Plaintiffs identified no witnesses in the district with knowledge of the patented technology. Litigating in California will be more convenient, efficient, and cost-effective for several reasons. First, the Northern District of California is more convenient for party witnesses. This Court has consistently held that transfer is favored where the parties' key witnesses are located in the transferee forum. See, e.g., Colida v. Panasonic Corp. of N. Am., No. 05 CIV. 5791(JSR)(JC), 2005 WL 3046298, at *2 (S.D.N.Y. Nov. 10, 2005). The accused functionalities were designed and developed by Apple in Cupertino, within the Northern District of California.1 Based on Apple's understanding of Plaintiffs' infringement allegations at this early stage of the case, every single one of Apple's witnesses who will likely testify about the design, development, and marketing of the accused Apple functionalities is employed in Apple's Cupertino headquarters in the Northern District of California. Because the Plaintiffs have identified no witness located in New York who will testify about the patented technology, it will not be substantially more convenient for Plaintiffs to litigate the case in New York versus Northern California. Second, the Northern District of California is more convenient for non-party witnesses. Apple is not aware of any non-party witnesses located in New York. In contrast, many potential non-party witnesses reside within the Northern District of California. Many of Plaintiffs' former employees – including at least four of the six named inventors of the asserted patents – appear to reside in the Northern District of California. To the extent these individuals are third-party witnesses, they will be subject to the subpoena power of the Northern District of California and not the subpoena power of this Court. See Fed. R. Civ. P. 45(c); Emblaze Ltd. v. Apple Inc., No. 10 CIV. 5713 PKC, 2011 WL 724275, at *3 (S.D.N.Y. Feb. 25, 2011). 1 Plaintiffs have accused various versions of Apple's iPhone and iPad products with the "Personal Hotspot" and "remote control" features as infringing the patents-in-suit. Dkt. 1 at ¶ 16. Plaintiffs have also identified the Apple Watch as an accused device. Id. As Apple has communicated to IXI's counsel, Apples disputes the inclusion of the Apple Watch as an accused device in this action on the grounds that it is still undergoing development and has not yet been released. SIMPSON THACHER & BARTLETT LLP Honorable Richard J. Sullivan -3- December 15, 2014 Third, the relevant documents in this Action are located in the Northern District of California. Under Apple's current understanding, the accused functionalities were designed and developed at Apple's headquarters in Cupertino, so the vast majority of the evidence that will be pertinent to the infringement analysis is located within the Northern District of California. Because the bulk of the relevant evidence in a patent case comes from the accused infringer, "the place where the defendant's documents are kept weigh in favor of transfer to that location." Millennium, L.P. v. Hyland Software, Inc., No. 03 Civ. 3900 (DC), 2003 WL 22928644, at *4 (S.D.N.Y. Dec. 10, 2003) (also noting that while "relevant documents can be transported from state to state in some fashion, for purposes of deciding transfer, the fact that the documents are all currently located in [the transferee forum] favors transfer"). Apple is aware of no relevant technical documents located in New York. Fourth, the locus of operative facts is clearly in Northern California. In a patent infringement case, the locus of operative facts is the jurisdiction where the design and development of the allegedly infringing products occurred. See Whitehaus Collection v. Barclay Products, Ltd., No. 11 CIV. 217 (LBS), 2011 WL 4036097, at *2 (S.D.N.Y. Aug. 29, 2011) (internal citation omitted). The accused Apple functionalities were designed and developed in the Northern District of California, and all relevant marketing activities occurred there. Apple understands that Plaintiffs' predecessor company was headquartered in the Northern District of California, and the current last-known addresses of a majority of the inventors are also in Northern California. Based on these facts, it appears likely that the invention of the asserted patents occurred either in Northern California, where Plaintiffs' predecessor company was founded, or in Israel, where IXI R&D is based. Apple understands that none of the operative facts of this Action occurred in New York. This case is in its infancy, with Apple having answered Plaintiffs' complaint just weeks ago. Transferring the Action at this stage of the litigation will serve the interests of judicial economy. Apple respectfully requests a pre-motion conference to seek permission to file a motion to transfer, or alternatively, authorization to file the motion without a pre- motion conference, and greatly appreciates the Court's willingness to consider this request. Respectfully submitted, /s/ Patrick E. King Patrick E. King SIMPSON THACHER & BARTLETT LLP Honorable Richard J. Sullivan -4- December 15, 2014 cc: Thomas Steven Biemer, Esq. Gregory A. Blue, Esq. Joshua D. Wolson, Esq. John J. Higson, Esq. Marshall Beil, Esq. Jason W. Cook, Esq. Brian C. Riopelle, Esq. Derek H. Swanson, Esq. Gregory S. Arovas, Esq. Todd M. Friedman, Esq. James E. Marina, Esq. David Rokach, Esq. James Henry McConnell, Esq. Mark W. Halderman, Esq.