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

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

REPLY MEMORANDUM OF LAW in Opposition re: 27 MOTION to Transfer Case Apple Inc.'s Notice of Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a). PLAINTIFFS SUR-REPLY IN FURTHER OPPOSITION TO DEFENDANTS MOTIONS TO TRANSFER. Document filed by IXI IP,LLC, IXI Mobile (R&D) Ltd.

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK IXI MOBILE (R&D), LTD., et al., No. 14-cv-4355 (RJS) Plaintiffs, -v- SAMSUNG ELECTRONICS CO., et al., Defendants. IXI MOBILE (R&D), LTD., et al., No. 14-cv-4428 (RJS) Plaintiffs, -v- BLACKBERRY, LTD., et al., Defendants. IXI MOBILE (R&D), LTD., et al., No. 14-cv-7954 (RJS) Plaintiffs, -v- PLAINTIFFS' SUR-REPLY IN FURTHER OPPOSITION TO APPLE INC., DEFENDANTS' MOTIONS TO TRANSFER Defendant. 118087982_2 Apple has attempted to confuse the issue of transfer by asserting for the first time in its reply brief that IXI Mobile – the Israel based co-plaintiff – does not have standing. But, whether IXI Mobile has standing does not result in California being the more appropriate forum. IXI Mobile developed the patents and has witnesses and documents located in Israel that are necessary to this case. IXI Mobile establishes a locus of operative fact in Israel that does not support the proposed California forum, and it has submitted facts that show that, given its Israel presence, New York is the more convenient forum. The elimination of IXI Mobile does not change the analysis or satisfy defendants' burden to show that California is the better forum. Of critical importance is the fact that if the Court were to conclude that IXI Mobile does not have standing, the New York forum becomes even more appropriate. At the pre-motion hearing, the Court specifically noted the need for a "firm factual basis," including the submission of declarations (at pp. 4-5), for determining the location and convenience of witnesses. 1 Apple indeed conceded (at p. 9) that the third-party inventors are "very important witnesses." But neither Apple, Samsung nor Blackberry submitted any declarations with respect to whether third parties were willing or unwilling to make themselves available – despite it being their burden on transfer. The only party that submitted declarations was IXI, which submitted declarations from inventors in California and Israel who affirmed that they would travel to New York. Apple's late attempt to remove IXI Mobile from the transfer analysis only further demonstrates the defendants' overall failure to meet their burden. Nonetheless, IXI submits the supplemental declaration of Dr. Zion Hadad and declaration of Mr. Israel Koffman. Dr. Hadad and Mr. Koffman are representatives of IXI Mobile and were specifically listed by Apple as witnesses in its Initial Disclosures. If IXI Mobile is deemed a non-party, both of these 1 A copy of the pre-motion hearing transcript is attached to the Supplemental Declaration of John J. Higson as Ex. 6. 118087982_2 individuals become third-party witnesses located in Israel, an undeniably less convenient circumstance to obtain their testimony. 2 Dr. Hadad and Mr. Koffman, however, state that they are willing to travel to New York to testify at trial even if IXI Mobile is deemed a non-party. [Supplemental Declaration of John J. Higson ("Supp. Higson. Dec.") at Exs. 1-2.] These additional declarations – along with the previously submitted declarations of the Israel and California based inventors – makes New York the most appropriate forum. This Court remains the only venue where all the parties may present testimony from the relevant witnesses, including the inventors and stakeholders from New York, Israel and California. Removing IXI Mobile as a party simply does not make California more convenient; rather, it makes it less convenient. Carruthers v. Amtrak, 1995 WL 378544, at *2 (S.D.N.Y. June 26, 1995) (force of compulsory process diminished where party shows witness is willing to testify). Witness Relevance Location ND Cal. Testimony SDNY Testimony Haller Inventor California Live Live Reisgies Inventor California Live Live Fornell Inventor California Live Deposition Haparnas Inventor Washington Deposition Deposition Itzhak Inventor Israel Possibly None Live Glick Inventor Israel Possibly None Live Hadad IXI Mobile Israel Possibly (as non-party) Live Koffman IXI Mobile Israel Possibly (as non-party) Live As shown, the Court need not reach the issue of standing to make a decision on transfer. In any event, Apple's conclusory argument is not correct. Apple relies on a concept that a party does not have standing when it is a "bare licensee." See Wiav Solutions LLC v, Motorola, Inc., 631 F.3d 1257, 1266 (Fed. Cir. 2010). A "bare licensee" holds nothing more than a promise from the patentee that it will not sue the licensee for practicing the patented invention. Id. Because the license agreement is subject to the underlying patent purchase agreement, a 2 Although Israel is a signatory to the Hague Convention, that process is undoubtedly more costly, less predictable and more inconvenient. 118087982_2 2 proper consideration of standing includes both agreements. 3 The relevant provisions establish that IXI Mobile is more than a "bare licensee." Rather, IXI Mobile has exclusionary rights because it has the right to practice the claimed inventions and has express or implied rights to exclude others from practicing the inventions. See Wiav Solutions LLC, 631 F.3d at 1266; see also Cognex Corp. v. Microscan Sys., Inc., 2014 WL 2989975, at *5 (S.D.N.Y. June 30, 2014). For example, IXI Mobile has the right to: (1) support, make, use, sell and import patented products; (2) reversionary interests in the patents; (3) have IXI IP to monetize the patents; (4) share in any proceeds; (5) retain patent rights for the duration of the patents; and (6) receive regular updates concerning monetization activities. [Supp. Higson Dec. at ¶¶ 9-13.] Moreover, as part of IXI Mobile's monetization rights, it was understood that IXI IP would enforce the patents against the defendants in New York. [Supplemental Declaration of Steve Pedersen at ¶ 2.]; see Wiav Solutions LLC, 631 F.3d at 1267 (holding that key to standing is right to exclude defendants from engaging in infringing activity). Based upon the record before the Court, IXI Mobile has standing. Respectfully submitted, /s/ Thomas S. Biemer Dated: March 2, 2015 Thomas S. Biemer, Esquire Attorney for Plaintiffs IXI MOBILE (R&D) Ltd. and IXI IP, LLC 3 Apple incorrectly suggests that it learned that IXI Mobile was an exclusive licensee in IXI's transfer response papers and that the license agreement was belatedly produced. First, the complaint (served in October, 2014) alleges that IXI Mobile is the exclusive licensee, something Apple would have known long ago. Second, the license agreement was not belatedly produced. Apple made an informal request for the license agreement on February 18, 2015, after IXI had filed its response brief. At that time, IXI's responses to Apple's discovery were not even due. Moreover, the parties had not finalized a protective order. Still, as a courtesy, IXI provided the license agreement within 24 hours of Apple's informal request. [Supp. Higson Dec. at ¶ 2.] 118087982_2 3 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK IXI MOBILE (R&D), LTD., et al., Plaintiffs, No. 14-cv-4355 (RJS) -v- SAMSUNG ELECTRONICS CO., et al., Defendants. IXI MOBILE (R&D), LTD., et al., Plaintiffs, No. 14-cv-4428 (RJS) -v- BLACKBERRY, LTD., et al., Defendants. IXI MOBILE (R&D), LTD., et al., Plaintiffs, No. 14-cv-7954 (RJS) -v- APPLE INC., Defendant. CERTIFICATION OF SERVICE I, Thomas S. Biemer, Esquire, do hereby certify that PLAINTIFFS' SUR-REPLY IN FURTHER OPPOSITION TO DEFENDANTS' MOTIONS TO TRANSFER were served on the date set forth below to all counsel of record as noted on the attached Service Lists of Counsel. 118089318_1 /s/ Thomas S. Biemer Dated: March 2, 2015 Thomas S. Biemer, Esquire Dilworth Paxson LLP 1500 Market Street, Suite 3500(E) Philadelphia, PA 19102 Email: tbiemer@dilworthlaw.com Attorney for Plaintiffs IXI MOBILE (R&D) Ltd. and IXI IP, LLC 2 118089318_1 1:14-cv-07954-RJS IXI Mobile (R&D) Ltd. et al v. Apple, Inc. Richard J. Sullivan, presiding Date filed: 10/02/2014 Date of last filing: 01/05/2015 Attorneys Gregory Todd Chuebon Simpson Thacher & Bartlett LLP (NY) 425 Lexington Avenue New York, NY 10017 (212)-455-3353 Apple, Inc. representing (212)-455-2502 (fax) (Defendant) gchuebon@stblaw.com Assigned: 10/22/2014 LEAD ATTORNEY ATTORNEY TO BE NOTICED Harrison J. Frahn, IV Simpson Thacher & Bartlett LLP (CA) 2475 Hanover Street Palo Alto, CA 94304 Apple, Inc. representing (650)-251-5065 (Defendant) hfrahn@stblaw.com Assigned: 11/10/2014 LEAD ATTORNEY Patrick E. King Simpson, Thacher & Barlett, L.L.P. 3330 Hillview Avenue Palo Alto, CA 94304 Apple, Inc. representing (650) 251-5000 (Defendant) pking@stblaw.com Assigned: 11/10/2014 ATTORNEY TO BE NOTICED 3 118089318_1 1:14-cv-04355-RJS IXI Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al Richard J. Sullivan, presiding Date filed: 06/17/2014 Date of last filing: 02/03/2015 Attorneys Gregory Steven Arovas Todd M. Friedman James E. Marina James Henry McConnell Samsung Electronics America, Inc. Kirkland & Ellis LLP (NYC) (Defendant) 601 Lexington Avenue Samsung Electronics Co., Ltd. New York, NY 10022 representing (Defendant) (212) 446-4800 x4766 Samsung Telecommunications America, (212) 446-4900 (fax) LLC greg.arovas@kirkland.com (Defendant) Assigned: 10/09/2014 ATTORNEY TO BE NOTICED David Rokach Kirkland & Ellis LLP (IL) Samsung Electronics America, Inc. 300 North LaSalle Street (Defendant Chicago, IL 60654 Samsung Electronics Co., Ltd. (312)-862-3169 representing (Defendant)) (312)-862-2200 (fax) Samsung Telecommunications America, david.rokach@kirkland.com LLC Assigned: 11/03/2014 (Defendant) ATTORNEY TO BE NOTICED 4 118089318_1 1:14-cv-04428-RJS IXI Mobile (R&D) Ltd. et al v. BlackBerry Limited et al Richard J. Sullivan, presiding Date filed: 06/18/2014 Date of last filing: 02/03/2015 Attorneys Marshall Beil McGuireWoods LLP (NYC) BlackBerry Corporation 1345 Avenue of the Americas (Counter Claimant 7th Floor BlackBerry Corporation New York, NY 10105 (Defendant)) representing 212-548-7004 BlackBerry Limited 212-715-2319 (fax) (Counter Claimant) mbeil@mcguirewoods.com BlackBerry Limited Assigned: 09/10/2014 (Defendant) ATTORNEY TO BE NOTICED Jason W. Cook BlackBerry Corporation McGuirewoods LLP (Counter Claimant) 2000 Mckinney Avenue, Suite 1400 BlackBerry Corporation Dallas, TX 75201 (Defendant) (214) 932-6418 representing BlackBerry Limited jcook@mcguirewoods.com (Counter Claimant) Assigned: 09/30/2014 BlackBerry Limited LEAD ATTORNEY (Defendant) ATTORNEY TO BE NOTICED Brian Charles Riopelle Derek H. Swanson McGuireWoods LLP (Richmond) BlackBerry Corporation One James Center (Counter Claimant 901 East Cary Street BlackBerry Corporation Richmond, VA 23219 (Defendant)) (804) 775-1084 representing BlackBerry Limited (804) 698-2150 (fax) (Counter Claimant) briopelle@mcguirewoods.com BlackBerry Limited Assigned: 09/30/2014 (Defendant) LEAD ATTORNEY PRO HAC VICE ATTORNEY TO BE NOTICED 5 118089318_1