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

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

MEMORANDUM OF LAW in Support re: 27 MOTION to Transfer Case Apple Inc.'s Notice of Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a). Document filed by Apple, Inc.

Interested in this case?

Current View

Full Text

0 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK Case No. 14-cv-7954-RJS-DF IXI Mobile (R&D) Ltd. and IXI IP, LLC, JURY TRIAL DEMANDED Plaintiffs, - against - APPLE INC., Defendant. MEMORANDUM OF LAW IN SUPPORT OF APPLE'S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a) 0 TABLE OF CONTENTS I. INTRODUCTION .........................................................................................................1 II. STATEMENT OF FACTS ............................................................................................2 A. The IXI Plaintiffs and the Patents-in-Suit ...............................................................2 B. Defendant Apple Inc. ...............................................................................................3 C. Third Party Witnesses ..............................................................................................4 III. ARGUMENT .................................................................................................................5 A. Legal Standard .........................................................................................................5 B. This Case Could Have Been Filed in the Northern District of California ...............6 C. This Case Should Be Transferred For The Convenience of the Parties and Witnesses, in the Interest of Justice .........................................................................7 1. The Northern District of California Is Substantially More Convenient for Both Party Witnesses and Non-Party Witnesses ..........7 2. The Relevant Documents Are Located in the Northern District of California ...........................................................................................9 3. The Northern District of California Is Substantially More Convenient for Apple, and Only Slightly Less Convenient for the Plaintiffs .........................................................................................10 4. The Locus of Operative Facts is in Northern California......................11 5. Potentially Unwilling Witnesses Are Subject to the Subpoena Power of the Northern District of California, But Not This Court ....................................................................................................12 6. All Parties Have the Means to Litigate in the Northern District of California .........................................................................................13 7. The Northern District of California and Southern District of New York Are Equally Familiar With Patent Law ..............................13 8. Plaintiffs' Choice of Forum Should Be Given Little Weight ..............13 9. Transfer to the Northern District of California Will Not Disrupt the Interests of Justice ..........................................................................14 IV. CONCLUSION ............................................................................................................15 i 0 TABLE OF AUTHORITIES Federal Cases Bionx Implants, Inc. v. Biomet, Inc., No. 99 Civ. 740 (WHP), 1999 WL 342306 (S.D.N.Y. May 27, 1999)......................... 13, 15 Broad. Data Retrieval Corp. v. Sirius Satellite Radio, Inc., 79 U.S.P.Q.2d 1603 (C.D. Cal. 2006) ................................................................................. 14 Cirrex Sys. LLC v. InfraReDx, Inc., No. 10 CIV 3952 DLC, 2010 WL 3431165 (S.D.N.Y. Aug. 31, 2010) ............................ 8-9 Colida v. Panasonic Corp. of N. Am., No. 05 Civ. 5791(JSR)(JC), 2005 WL 3046298 (S.D.N.Y. Nov. 10, 2005)................... 7, 13 Cower v. Albany Law School of Union Univ., No. 04 Civ. 0643(DAB), 2005 WL 1606057 (S.D.N.Y. July 8, 2005) ................................. 7 Emblaze Ltd. v. Apple Inc., No. 10 Civ. 5713 PKC, 2011 WL 724275 (S.D.N.Y. Feb. 25, 2011) .......................... passim France Telecom S.A. v. Marvell Semiconductor, Inc., No. 12 Civ. 4986 JSR, 2012 WL 6808527 (S.D.N.Y. Dec. 28, 2012)....................... 6, 11-12 In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) ........................................................................................... 12 In re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2011) ........................................................................................... 14 In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009) ............................................................................................. 5 In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) .............................................................................................. 5-6 Int'l Sec. Exch., LLC v. Chicago Bd. Options Exch. Inc., No. 06 Civ. 13445(RMB)(THK), 2007 WL 1541087 (S.D.N.Y. May 24, 2007) ................. 7 Kwik Goal, Ltd. v. Youth Sports Pub, Inc., No. 06 Civ. 395(HB), 2006 WL 1517598 (S.D.N.Y. May 31, 2006) ................................... 8 Millennium, L.P. v. Dakota Imaging, Inc., No. 03 Civ. 1838 (RWS), 2003 WL 22940488 (S.D.N.Y. Dec. 15, 2003) ................... 11, 15 Millennium, L.P. v. Hyland Software, Inc., No. 03 Civ. 3900, 2003 WL 22928644 (S.D.N.Y. Dec. 10, 2003) ....................................... 9 ii 0 Serconet, Ltd. v. Netgear, Inc., No. 06 Civ. 5026 (JSR), 2006 WL 2109462 (S.D.N.Y. July 27, 2006) ........................ 13, 14 Walker v. Jon Renau Collection, Inc., 423 F. Supp. 2d 115 (S.D.N.Y. 2005) ........................................................................... 11, 14 Whitehaus Collection v. Barclay Products, Ltd., No. 11 Civ. 217(LBS), 2011 WL 4036097 (S.D.N.Y. Aug. 29, 2011)...................... 9, 13-14 Federal Statutes 28 U.S.C. § 1404(a) .................................................................................................................. 6 Federal Rules Fed. R. Civ. P. 45(c)(1) ........................................................................................................... 12 iii 0 I. INTRODUCTION This case has overwhelming connections to the Northern District of California and virtually no connection to New York. The accused devices were designed and developed by Apple in the Northern District of California. Based on Apple's current understanding of the features and functions that Plaintiffs seem to be accusing in their overly general and deficient infringement contentions, every Apple employee who is likely to testify at trial lives and works in the Northern District of California. Even Plaintiffs have more ties to the Northern District of California than to New York. Apple understands that Plaintiffs' predecessor company was headquartered in Redwood City in the Northern District of California. Many of Plaintiffs' former employees – including at least four of the six named inventors of the asserted patents – have last-known addresses in the Northern District of California. These individuals are subject to the subpoena power of the Northern District of California and not the subpoena power of this district. In stark contrast, no anticipated Apple witnesses live in New York. Apple knows of no relevant documents and no potential third-party witnesses located in the district. Even Plaintiffs' connections to this district are tenuous. The first plaintiff, IXI R&D, is the Israel-based research and development arm of a company previously headquartered in Northern California and Apple is not aware of any ties between IXI R&D and New York. The second, 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 mere months after the company was established and registered in New York. IXI IP then promptly licensed the patents back to IXI R&D. It is not clear whether IXI IP has any operations in New York. But it is clear that Plaintiffs have identified no witnesses in the district with knowledge of the patented technology. 1 0 The transfer analysis is straightforward: litigating in California will be significantly more convenient, efficient, and cost-effective. As set forth below, both the private and public interest factors strongly support a transfer to the Northern District of California. II. STATEMENT OF FACTS IXI Mobile (R&D) Ltd. ("IXI R&D") and IXI IP, LLC ("IXI IP") (together, "Plaintiffs") sued Apple Inc. ("Apple") on October 2, 2014,1 claiming certain Apple functionalities infringe four unique patents.2 Dkt. 1 ("Compl.") ¶ 16.3 A. The IXI Plaintiffs and the Patents-in-Suit Plaintiff IXI R&D is an Israeli corporation with its headquarters in Rishon LeZion, just outside of Tel Aviv. Compl. ¶ 2; Declaration of Elizabeth A. Gillen ("Gillen Decl.") ¶ 2, Ex. A. Based on publicly available information, IXI R&D was the research and development branch of the now defunct IXI Mobile, Inc. ("IXI Mobile"). Gillen Decl. ¶ 3, Ex. B. IXI Mobile was 1 Plaintiffs had previously filed two separate suits asserting the same patents. First, they sued Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, "Samsung") on June 17, 2014. The next day, Plaintiffs sued BlackBerry Limited and BlackBerry Corporation (collectively, "BlackBerry"). See Case 1:14-cv-04355-RJS ("Samsung Action"), Dkt. 1; Case No. 1:14-cv-04428-RJS, ("BlackBerry Action") Dkt. 1. 2 U.S. Patent Nos. 7,295,532 (the "'532 Patent," relating to "a system, device and computer readable medium that monitors and reconfigures a LAN by a WAN operator"); 7,426,398 (the "'398 Patent," relating to "a system for controlling an event on a mobile communication device."); 7,016,648 (the "'648 Patent," relating to "a method, system, and computer readable medium allow[ing] downloading of a software component to a short distance wireless network in response to device information and/or user information"); and 7,039,033 (the "'033 Patent," relating to "a system, a wireless hand-held device, and software component for accessing information responsive to short-range radio signals") (collectively, the "patents-in-suit"). 3 In connection with the functionalities described in Plaintiffs' Complaint and Preliminary Infringement Contentions, Plaintiffs have named the Apple Watch as a device on which those functionalities may be present. Compl. at ¶ 16. Apple has informed IXI's counsel that Apple disputes the inclusion of the Apple Watch in this action on the grounds that it is still in development and has not yet been released. Gillen Decl. ¶ 22, Ex R. As a result, Apple's analysis herein does not include the Apple Watch. 2 0 founded in 2000 and, until its closing, was headquartered in Redwood City, within the Northern District of California. Compl. ¶ 10; Gillen Decl. ¶ 4 Ex. C. Plaintiff IXI IP is a limited liability company formed a few months ago with a registered address of 1218 Central Avenue in Albany, New York. Compl. ¶ 3; Gillen Decl. ¶ 11, Ex. I. According to IXI IP's bare-bones website, it operates out of an office suite at 405 Lexington Avenue in New York, New York. Gillen Decl. ¶ 12, Ex. J. Based on Apple's current understanding, this suite occupies space on a floor of the Chrysler Building that is home to one or more New York law firms. Id. at ¶ 13. IXI IP received the asserted patents from IXI R&D on June 5, 2014. Id. at ¶¶ 14-17, Exs. K-N. According to Plaintiffs, IXI IP immediately granted an exclusive license back to IXI R&D. Id.; Compl. at ¶¶ 2-3. Apple has found nothing in the public domain or on the company website that suggests IXI IP has any business operations other than patent assertion activities. Based on Apple's current understanding, the patents-in-suit were invented in Northern California and Israel. The last-known addresses for four of the six inventors are in the Northern District of California. Gillen Decl. ¶¶ 5-8, Exs. D-G. The remaining two inventors appear to be located in Israel. Id. at ¶¶ 9-10. Plaintiffs' Initial Disclosures do not list a single inventor—or any other witness—knowledgeable about the patented technology located in New York. Id. at ¶ 8, Ex. G at 2-3. B. Defendant Apple Inc. Apple is a California corporation headquartered in Cupertino, California. Declaration of John William Van Dyke ("Van Dyke Decl.") ¶ 3. Plaintiffs have alleged that two distinct Apple functionalities infringe its patents: (1) Apple's "Personal Hotspot" feature and (2) remote control functionality (collectively, the "Accused Functionalities"). Based on Apple's understanding of IXI's accusations at this stage of the case, both functionalities were designed 3 0 and developed by engineers at Apple's Cupertino campus in the Northern District of California. The employees with primary knowledge of the design, development, and marketing of these Accused Functionalities reside and work in or near Cupertino. Id. at ¶ 5. Documents reflecting that work are also located there. Id. at ¶ 6.4 Apple's business activities in the Southern District of New York have no relevant connection to the technology accused here. Id. at ¶¶ 7-11. Apple sells its products nationwide; Apple's retail presence in New York is no different from its retail operations across the country and around the world. Id. at ¶ 7. Apple maintains two non-retail locations within the district, but neither facility has anything to do with the Accused Functionalities in this case. Id. at ¶¶ 8-10. Accordingly, based on Apple's understanding of the scope of the accused "Personal Hotspot" and remote control functionalities, none of the Apple employees with significant responsibility for the design, development, or marketing of these features is located in this district. Id. at ¶¶ 7- 11. Apple is not aware of any relevant technical, marketing, or financial records that are kept in New York. Id. at ¶ 11. C. Third Party Witnesses At least four of the six named inventors of the patents-in-suit appear to be located in the Northern District of California. See supra at 3. Amit Haller, a named inventor of the '532, '648, and '033 Patents, is a founder of IXI Mobile, and his last-known address is within the Northern District of California. Gillen Decl. ¶ 5, Ex. D. A second inventor, Peter Fornell, was until recently a Director of Engineering at Cisco, a company headquartered in Milpitas, California, in the Northern District of California, and his last-known address is also in that district. Id. at ¶ 6, 4 While Apple does not consider the Apple Watch to be part of the case at this time, see supra n.3, Apple's current understanding is that all design, development, and marketing efforts for the Apple Watch are or will be occurring at Apple's Cupertino campus. Van Dyke Decl. ¶ 5, n.1. 4 0 Ex. E. A third inventor, Hans Reisgies, previously worked at Sequent Software Inc., headquartered in Mountain View, California, and also has a last-known address within the Northern District of California. Id. at ¶ 7, Ex. F. Finally, according to Plaintiffs' Initial Disclosures, inventor Ziv Haparnas also resides within the Northern District of California. Id. at ¶ 8, Ex. G. The remaining two inventors appear to be located in Israel, but at least one has traveled to the Northern District of California to conduct business in connection with patent assignments. Id. at ¶¶ 9-10, Ex. H. Apple is aware of nothing connecting any of the inventors to New York. A complete listing of the inventors of the patents-in-suit and their last-known locations is as follows: Patent(s) Inventor Current Location '398 Patent Hans Reisgies Northern District of California '532, '648, and '033 Patents Amit Haller Northern District of California '532, '648, and '033 Patents Peter Fornell Northern District of California '532, '648, and '033 Patents Ziv Haparnas Northern District of California '532, '648, and '033 Patents Avraham Itzchak Israel '033 Patent Amir Glick Israel While this case is still in its very early stages and Apple's investigation is ongoing, Apple anticipates that witnesses with knowledge of key prior art are also located in the Northern District of California. Gillen Decl. ¶ 18. III. ARGUMENT A. Legal Standard Transfer under 28 U.S.C. §1404(a) is appropriate upon a showing by the moving party that the transferee venue is "clearly more convenient" than the plaintiff's chosen forum. In re Nintendo Co., 589 F.3d 1194, 1197 (Fed. Cir. 2009) (internal quotation marks omitted). Courts have recognized that the "underlying premise of § 1404(a) is that courts should prevent plaintiffs from abusing their privilege. . . by subjecting defendants to venues that are inconvenient under 5 0 the terms of § 1404(a)." In re Volkswagen of Am., Inc., 545 F.3d 304, 313 (5th Cir. 2008). First, the court must determine whether the claims could have been brought in the proposed transferee district. See Emblaze Ltd. v. Apple Inc., No. 10 Civ. 5713 PKC, 2011 WL 724275, at *2 (S.D.N.Y. Feb. 25, 2011). Next, if this threshold is met, the court must assess whether transfer is warranted for "the convenience of parties and witnesses, in the interest of justice." 28 U.S.C. § 1404(a). The court assesses the convenience of the parties and witnesses in both forums by considering several private and public factors, none of which is dispositive. These factors include: "(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 quotation marks omitted). Here, each of the relevant factors either favors transfer or is neutral. B. This Case Could Have Been Filed in the Northern District of California Plaintiffs could have brought this case in the Northern District of California, where Apple is headquartered. Van Dyke Decl. ¶ 3. Plaintiffs' counsel has even conceded that "[t]here's absolutely no dispute" that the Northern District of California would be an appropriate place for this action. Gillen Decl. ¶ 23, Ex. S (January 20, 2015 Pre-Motion Conference Transcript) at 5:13-19. The initial threshold is satisfied. 6 0 C. This Case Should Be Transferred in the Interest of Justice and for the Convenience of the Parties and Witnesses 1. The Northern District of California Is Substantially More Convenient for Both Party Witnesses and Non-Party Witnesses (a) Party Witnesses Transfer is favored where the parties' witnesses are located in the transferee forum. 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) (finding transfer proper where the "principal witnesses are located in another district"); see also Cower v. Albany Law School of Union Univ., No. 04 Civ. 0643(DAB), 2005 WL 1606057, at *2 (S.D.N.Y. July 8, 2005) (explaining that location of key party witnesses is one of the most important factors in a transfer analysis). Additional weight must be placed on the convenience of those witnesses who will "testify about the technology of the allegedly infringing inventions." Int'l Sec. Exch., LLC v. Chicago Bd. Options Exch. Inc., No. 06 Civ. 13445(RMB)(THK), 2007 WL 1541087, at *3-*4 (S.D.N.Y. May 24, 2007). Every single one of Apple's witnesses who at this point in the proceedings appear likely to testify about the design, development, and marketing of the Accused Functionalities is employed in Apple's Cupertino headquarters in the Northern District of California. Van Dyke Decl. ¶¶ 5, 7-10. It would be substantially more convenient and cost-effective for these witnesses to participate in proceedings in the Northern District of California, rather than travel thousands of miles to the Southern District of New York. Apple is unaware of any potential Apple witnesses located in New York likely to testify about the design, development, or marketing of the Accused Functionalities. See id. Moreover, Apple is not aware of a single witness for the Plaintiffs who resides in New York and is likely to testify about the patented technology. Gillen Decl. ¶¶ 5-10. Any witnesses from IXI R&D's home country of Israel will have to travel a substantial distance to attend trial in 7 0 the United States, regardless of whether the trial is located in New York or California. See Emblaze, 2011 WL 724275, at *2 (transferring an Israeli plaintiff's lawsuit from the Southern District of New York to the Northern District of California because "[t]he difference in degree of inconvenience to plaintiff is not very substantial"). The flight from Tel Aviv to New York is approximately 5,660 miles and the trip from Tel Aviv to San Francisco is approximately 7,400 miles. Gillen Decl. ¶ 21. But if the case proceeds in New York, at least four of the six inventors will need to travel more than 2,500 miles from San Francisco to New York, and the remaining two will need to make the trip from Tel Aviv to the United States in any case. Id. at ¶¶ 5-10. Accordingly, the inventors' collective flight time will be significantly reduced if this case proceeds in California. While Plaintiffs' Initial Disclosures list Steve Pederson as an individual associated with IXI IP who may be located in New York, Plaintiffs have made clear that his testimony will be limited to the "ownership of the patents-in-suit," and therefore should be afforded little weight. See Cf. Kwik Goal, Ltd. v. Youth Sports Pub, Inc., No. 06 Civ. 395(HB), 2006 WL 1517598, at *4 (S.D.N.Y. May 31, 2006) (explaining that "key" witnesses are those involved in the design of the allegedly infringing products); see also Gillen Decl. ¶ 8, Ex. G at 3. Indeed, when asked which of its witnesses are located in New York, Plaintiffs admitted that the only witness is IXI IP's manager "who has an office in New York and lives in New Jersey." Gillen Decl. ¶ 23, Ex. S at 7:9-16. Plaintiffs then conceded that this individual would testify only as to "the structure of the entity, the financing of the entity, and the document production of the entity" – not the patents, technology, or accused products. Id. at 7:17-23. The fact that IXI's attorneys are located in New York is not relevant here. See Cirrex Sys. LLC v. InfraReDx, Inc., No. 10 CIV 3952 DLC, 2010 WL 3431165, at *3 (S.D.N.Y. Aug. 8 0 31, 2010) (holding that "any inconvenience to [the plaintiff's] New York-based counsel is irrelevant"). Accordingly, this factor strongly favors transfer. (b) Non-party Witnesses It is widely recognized that "[t]he convenience of non-party witnesses is accorded more weight than that of party witnesses." Whitehaus Collection v. Barclay Products, Ltd., No. 11 Civ. 217(LBS), 2011 WL 4036097, at *4 (S.D.N.Y. Aug. 29, 2011) (internal quotation marks omitted); see also Emblaze, 2011 WL 724275 at *3 (finding location of and ability to secure testimony from non-party witnesses of "great significance"). Apple is not aware of any non- party witnesses located in New York. Gillen Decl. ¶¶ 5-10. There are, however, many potential non-party witnesses within the subpoena power of the Northern District of California, including more than half of the inventors of the patents-in-suit and individuals with information on potential prior art. See supra at 4-5. This factor weighs heavily in favor of transfer. 2. The Relevant Documents Are Located in the Northern District of California It is widely recognized that in patent cases the bulk of the relevant evidence comes from the accused infringer. Millennium, L.P. v. Hyland Software, Inc., No. 03 Civ. 3900 (DC), 2003 WL 22928644, at *4 (S.D.N.Y. Dec. 10, 2003). As a result, even in light of modern electronic discovery practices and the ease of transporting documents, "the place where the defendant's documents are kept weigh[s] in favor of transfer to that location." Id. (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"). Because the Accused Functionalities were developed in the Northern District of California, and the engineers who worked on those features are predominantly still at Apple, the vast majority of the documents that will be relevant to the infringement analysis in this case 9 0 are located at or near Apple's headquarters. Van Dyke Decl. ¶ 6. This evidence includes documents relating to the design and development of Apple's accused products, marketing materials regarding the Accused Functionalities, and financial records containing revenue and other information relevant to the calculation of damages. Apple is aware of no relevant documents located in New York. Van Dyke Decl. ¶ 11. Any additional evidence Plaintiffs may offer in connection with its infringement claims is likely located in either the Northern District of California or Israel. See supra at 3. Because IXI R&D's predecessor was located in the Northern District of California and the inventions covered by the patents-in-suit appear to have been primarily developed in either the Northern District of California or Israel, any documents relevant to the patented technology or related inventions are most likely to be housed in those locations or were recently shipped to New York to bolster Plaintiffs' venue claims. Any IXI IP documents originating from New York are likely to concern only the ownership of the patents-in-suit, and not the development of the technology at issue.5 See Gillen Decl. ¶¶ 11-13. Accordingly, litigating this case in the Northern District of California will make access to sources of proof substantially more convenient. This factor weighs heavily in favor of transfer. 3. The Northern District of California Is Substantially More Convenient for Apple, and Only Slightly Less Convenient for the Plaintiffs Transferring this action will drastically reduce costs for Apple, preventing the need for numerous Apple witnesses residing in the Northern District of California to make cross-continent trips to the Southern District of New York. See supra at 7. Because this case involves four separate patents covering more than one technical area, Apple anticipates that it will call multiple 5 If any of these documents are stored at IXI IP's registered address, they will be in Albany – within the Northern District of New York. Gillen Decl. ¶ 11. 10 0 witnesses to describe the accused technologies, increasing the number of individuals required to travel and multiplying the cost of attendance. Plaintiffs, on the other hand, will not be substantially inconvenienced by a transfer to the Northern District of California. IXI R&D's Israeli witnesses will need to travel internationally in any event, and the trip from Tel Aviv to San Francisco is only marginally longer than the trip from Tel Aviv to New York. See supra at 7-8; see also Emblaze, 2011 WL 724275, at *2; Walker v. Jon Renau Collection, Inc., 423 F. Supp. 2d 115, 118 (S.D.N.Y. 2005) (finding transfer appropriate where "the hardship of travel on plaintiff will only slightly be increased, since she would have to travel from London regardless of where the case is decided"). This factor weighs in favor of transfer. 4. The Locus of Operative Facts is in Northern California In a patent infringement case, the locus of operative facts is typically the jurisdiction where the design and development of the allegedly infringing products occurred. See Millennium, L.P. v. Dakota Imaging, Inc., No. 03 Civ. 1838 (RWS), 2003 WL 22940488, at *7 (S.D.N.Y. Dec. 15, 2003) (granting transfer where the "design, development, and some of the marketing of the product allegedly infringing plaintiff's patent occurred in the transferee forum and the designers, developers, and marketers live and work in that forum."). Apple understands that all of the operative facts in this case occurred in either the Northern District of California or in Israel. The Accused Functionalities were designed and developed in the Northern District of California, and all relevant marketing activities occurred there. Some courts within this district have noted that the locus of operative facts may include where the patented invention was developed. See France Telecom, 2012 WL 6808527, at *1 (explaining that locus of operative facts can be "either where the patented invention was 11 0 developed, or where the allegedly infringing product was designed, developed, and produced"). This factor further supports transfer. Here, IXI R&D's activities around the time the inventors filed for the patents-in-suit were either in Israel or in the Northern District of California, where IXI Mobile, Inc. was founded. Thus, it is likely that the patented inventions were developed either in Israel or the Northern District of California – and not in New York. See id. (granting transfer where "operative facts appear to have occurred in several different locales around the world," but the transferee forum was "the locus of many of the operative facts") (emphasis added). Thus, this factor also weighs in favor of transfer to the Northern District of California. 5. Potentially Unwilling Witnesses Are Subject to the Subpoena Power of the Northern District of California, But Not This Court This Court has acknowledged that the location of non-party witnesses is one of the most significant factors, particularly where "the ability to secure their live testimony at trial may be dependent on whether they reside within the subpoena power of the court." Emblaze, 2011 WL 724275, at *3. Federal courts have subpoena power to command a person to attend a trial, hearing, or deposition within the state or within 100 miles of "where the person resides, is employed, or regularly transacts business in person" Fed. R. Civ. P. 45(c)(1). As set out above, Apple has identified a number of likely non-party witnesses whom fall within the subpoena power of the Court in the Northern District of California, but reside outside the subpoena power of this Court and would not be compelled to attend trial here. See supra at 4-5. According to Plaintiffs' Initial Disclosures and Apple's investigation to date, there are no such witnesses in New York. Id. This factor weighs heavily in favor of transfer. See In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) ("The fact that the transferee venue is a venue with usable subpoena power. . . weighs in favor of transfer, and not only slightly."). 12 0 6. All Parties Have the Means to Litigate in the Northern District of California This factor is neutral. While courts generally evaluate the relative means of the litigants in a particular case, "this factor is not entitled to great weight when both parties are corporations." Bionx Implants, Inc. v. Biomet, Inc., No. 99 Civ. 740 (WHP), 1999 WL 342306, at *5 (S.D.N.Y. May 27, 1999). Moreover, as set out above, even though IXI R&D is located in Israel, litigating in California will not impose any more undue hardship than litigating in New York would with respect to the expenditure of resources. See supra at 7-8. 7. The Northern District of California and Southern District of New York Are Equally Familiar With Patent Law This factor is neutral. Although the Northern District of California hears a high volume of patent cases and has adopted its own Local Rules of Practice for Patent Cases, see Gillen Decl. ¶¶ 19-20, both the Northern District of California and this district are "equally capable of hearing this patent action grounded in federal law." Serconet, Ltd. v. Netgear, Inc., No. 06 Civ. 5026 (JSR), 2006 WL 2109462, at *2 (S.D.N.Y. July 27, 2006). 8. Plaintiffs' Choice of Forum Should Be Given Little Weight Plaintiffs' choice to file suit in this district should be given little deference for at least two reasons. First, "where a plaintiff's chosen forum is not his home state, his choice of forum is given less weight." Colida, 2005 WL 3046298, at *2. IXI R&D is based in Israel. This Court has previously granted Apple relief when sued in this District by a foreign plaintiff with little connection to New York. See Emblaze, 2011 WL 724275, at *2 (Plaintiff's chosen forum was "afforded less weight because it is headquartered in Israel and thus a change of venue would not deprive it of the opportunity to be heard in its home forum."). Second, little weight should be placed on IXI IP's choice of forum "where the operative facts have no connection to the chosen district." Whitehaus, 2011 WL 4036097, at *3 (internal 13 0 quotation marks omitted). IXI IP registered in New York days before they filed suit in this district. Apple is unaware of any actual business operations of IXI IP other than suing operating companies and demanding licenses. See Gillen Decl. ¶¶ 11-13; see also In re Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2011) (finding plaintiff's presence in Texas was "recent, ephemeral, and a construct for litigation [that] appeared to exist for no other purpose than to manipulate venue"). Just like the plaintiff in Microsoft, IXI IP registered just months prior to filing this suit. Gillen Decl. ¶ 11. IXI IP took title to the patents-in-suit and then immediately granted an exclusive license back to IXI R&D. See supra at 3; Compl. at ¶¶ 2-3. These facts suggest a connection to this district created purely for litigation purposes. See, e.g., Broad. Data Retrieval Corp. v. Sirius Satellite Radio, Inc., No. CV 06-1190 JFW SSX, 2006 WL 1582091, at *3 (C.D. Cal. June 6, 2006) (finding plaintiff's creation of subsidiary and subsequent assignment of patents to that entity "nothing more than an elaborate scheme to forum shop"). Accordingly, Plaintiffs' choice of forum is entitled to little or no weight. See Serconet, 2006 WL 2109462, at *2 ("[W]here, as here, the other factors all favor transfer and the connection between the case and the Southern District of New York is virtually nonexistent, plaintiff's choice of forum is insufficient to prevent transfer."). 9. Transfer to the Northern District of California Will Not Disrupt the Interests of Justice This case is in its infancy, and transferring the action at this stage of the litigation will serve the interests of judicial economy. See Serconet, 2006 WL 2109462, at *2 (finding that transfer does not preclude judicial efficiency where "there has not yet been any discovery or other substantial proceedings"); Walker, 423 F. Supp. 2d at 119 (allowing transfer prior to "significant investment by the Southern District of New York in this case in terms of either time or work"). This case was filed roughly four months ago. Plaintiffs served Apple with their 14 0 preliminary infringement contentions just weeks ago, on January 21, 2015. Invalidity contentions have not yet been exchanged, nor has there been any substantive motion practice. 6 Moreover, the Northern District of California has a compelling interest in litigation involving a resident defendant, accused functionality developed in the forum, and witnesses and evidence located in the district. See Dakota Imaging, 2003 WL 22940488, at *8 (finding that the interests of justice favored transfer where claims are more closely tied to the transferee forum). At its core, this is a dispute between a foreign plaintiff and a California defendant. Ultimately, the Northern District of California has a far greater interest in the resolution of the claims at issue. See Bionx, 1999 WL 342306, at *5 (finding that the transferee court had a "strong public interest in adjudicating th[e] dispute" because it was the defendant's home forum and "most of the alleged culpable conduct took place there"). This factor also favors transfer. IV. CONCLUSION Apple respectfully requests that the Court grant Apple's motion to transfer this action to the Northern District of California. 6 Further, to the extent that interests of judicial economy are best served by transferring the Samsung Action and the BlackBerry Action to the Northern District of California as well, transfer of those actions is both proper under § 1404(a) and supported by the defendants in those related cases. See BlackBerry Action, Dkt. 43 (BlackBerry's Pre-Motion Letter Supporting Transfer), Samsung Action, Dkt. 40 (Samsung's Pre-Motion Letter Supporting Transfer), and the Motions to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) filed concurrently herewith by BlackBerry and Samsung in their respective actions. 15 0 Dated: February 3, 2015 Respectfully submitted, By /s/ PATRICK E. KING PATRICK E. KING HARRISON J. FRAHN IV hfrahn@stblaw.com PATRICK E. KING pking@stblaw.com SIMPSON THACHER & BARTLETT LLP 2475 Hanover Street Palo Alto, California 94304 Telephone: (650) 251-5000 GREGORY T. CHUEBON gchuebon@stblaw.com SIMPSON THACHER & BARTLETT LLP 425 Lexington Avenue New York, NY 10017 Tel: (212) 455-2000 Attorneys for Defendant Apple Inc. 16