IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN ... · Case 1:09-cv-00740-LMB-JFA Document 100 Filed 09/10/2009 Page 3 of 38. 4 In re Volkswagen of America, Inc., 545 F.3d 304,

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

SPH AMERICA, LLC,

Plaintiff,

v.

ACER, INC., et al., AMAZON.COM, INC., APPLE,

INC., CASIO COMPUTER CO., LTD., et al.,

DELL, INC., FUJITSU AMERICA, INC., et al.,

GENERAL DYNAMICS ITRONIX CORP.,

HEWLETT PACKARD CO., et al., HUAWEI

TECHNOLOGIES CO., LTD. et al., LENOVO

GROUP LTD., et al., MOTOROLA, INC., NOKIA

CORPORATION, et al., NOVATEL WIRELESS

INC., et al., OPTION, INC., et al., PALM INC.,

PANASONIC CORPORATION, et al., PERSONAL

COMMUNICATIONS DEVICES LLC, et al.,

SIERRA WIRELESS, INC., et al., SONY

CORPORATION, et al., SONY ERICSSON

MOBILE COMMUNICATIONS AB, et al.,

UTSTARCOM, INC., and ZTE CORPORATION, et

al.,

Defendants.

CASE NO. 1:09-cv-740-LMB

DEFENDANTS’ BRIEF IN SUPPORT OF THEIR JOINT MOTION TO TRANSFER

VENUE PURSUANT TO 28 U.S.C. § 1404(a) TO THE U.S. DISTRICT COURT FOR

THE SOUTHERN DISTRICT OF CALIFORNIA

Defendants Acer, Inc., Acer America Corporation (collectively, “Acer”); Amazon.com,

Inc. (“Amazon”); Apple, Inc. (“Apple”); Casio America, Inc., Casio Corporation of America,

Inc. (collectively, “Casio”); General Dynamics Itronix Corp. (“General Dynamics Itronix”);

Motorola, Inc. (“Motorola”), Nokia, Inc. (“Nokia”); Novatel Wireless Inc., Novatel Wireless

Solutions, Inc., Novatel Wireless Technology, Inc. (collectively, “Novatel Wireless”); Option

Case 1:09-cv-00740-LMB-JFA Document 100 Filed 09/10/2009 Page 1 of 38

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NV, Option Wireless USA, Inc. (collectively, “Option”); Palm Inc. (“Palm”); Panasonic

Corporation of North America, Panasonic Consumer Electronics Company, Panasonic Electronic

Devices Corporation of America (collectively, “Panasonic”); Sierra Wireless, Inc., Sierra

Wireless America, Inc. (collectively, “Sierra Wireless”); Sony Corporation of America, Sony

Electronics Inc. (collectively, “Sony”); Sony Ericsson Mobile Communications (USA) Inc.

(“Sony Ericsson”); UTSTARCOM, Inc. (“UTStarcom”) (collectively, “Defendants”) hereby

respectfully and jointly submit this brief in support of their Motion To Transfer Venue Pursuant

To 28 U.S.C. § 1404(a) To The U.S. District Court For The Southern District Of California.1

Defendants further respectfully request oral argument on this motion to be set pursuant to Local

Rule 7(E) on Friday, October 9, 2009 or at the convenience of the Court.

I. INTRODUCTION

SPH first filed an action in this District in July 2008 against Kyocera Wireless Corp.

(“Kyocera”) and other defendants, asserting three of the five patents-in-suit here. Judge Gerald

Bruce Lee of this District transferred that case to the Southern District of California on

Kyocera’s motion because there were no meaningful contacts with Virginia and because key

witnesses, including employees of third-party chip maker Qualcomm, were located in California.

After transfer, Judge Dana Sabraw in San Diego federal court denied SPH’s motion to re-transfer

the case back to Virginia. In the wake of this prior transfer order, SPH filed, over a span of two

weeks, two actions asserting those same patents in this District – one on June 25, 2009 (naming

1

Defendants Dell, Inc., Hewlett-Packard Company (“HP”); Lenovo Group Ltd., Lenovo

Holding Co., Inc., Lenovo (USA) Inc. (collectively “Lenovo”); Personal Communications

Devices, LLC, Personal Communications Devices Holdings, LLC (collectively “PCD”) and ZTE

(USA) Inc. have not yet joined but do not oppose the joint motion. Defendants have yet to

determine the position of defendants not yet served. Defendants Amazon, Apple, General

Dynamix Itronix, Motorola, Nokia, Novatel Wireless, Option, Palm, Sierra Wireless, Sony, Sony

Ericsson, and UTStarcom have submitted declarations in support of this Motion. These

declarations have been attached as Exhibits 6-16, 27 to this brief.


3

some of the same defendants in this action) and this action on July 6, 2009. After drawing Judge

Lee in its first attempt, SPH voluntarily and without explanation dismissed that action on July 2

and filed this current action, naming more defendants and adding a patent. The second suit was

assigned to this Court, which played no role in Judge Lee’s original transfer of the Kyocera

action. SPH’s strategy was clear: keep filing new suits until someone other than Judge Lee was

assigned to the case. SPH’s strategy succeeded when this case was assigned.

This action just like the prior related action filed by SPH and transferred to California by

Judge Lee belongs in California, clearly a more convenient venue than Virginia for the likely

witnesses and the parties. The defendants in this action and crucial third-party witnesses do not

appear to have any meaningful contacts with this District. By contrast, California, and in

particular the Southern District of California, has a far greater interest in this lawsuit and is far

more convenient to the likely witnesses and to the parties. Nearly all of the Defendants have

some connection with California and most have connections with the Southern District that are

material to resolution of this dispute. Moreover, the Southern District of California is the home

of QUALCOMM, Inc. (“Qualcomm”), a third-party supplier of integrated circuits (“chips”).

Qualcomm supplies the chips that contain the technology accused of infringement in the accused

products of 19 of the 22 defendant groups.2

As a result, most of the relevant evidence and likely

witnesses will be located in California, and none in Virginia.

Section 1404(a) was enacted to address abuse of the venue statute:

The underlying premise of § 1404(a) is that courts should prevent plaintiffs from

abusing their privilege under § 1391 by subjecting defendants to venues that are

inconvenient under the terms of § 1404(a). . . . Thus, while a plaintiff has the

privilege of filing his claims in any judicial division appropriate under the general

venue statute, § 1404(a) tempers the effects of the exercise of this privilege.

2

The 41 defendants to this action can be arranged into 22 groups of defendants

corresponding to the accused acts of infringement.


4

In re Volkswagen of America, Inc., 545 F.3d 304, 313 (5th Cir. 2008) (citations omitted)

(granting writ of mandamus requiring district court to transfer).

The appropriate remedy for SPH’s conduct is to transfer this action to the same venue to

which Judge Lee transferred SPH’s earlier case – the U.S. District Court for the Southern District

of California. SPH’s allegations in this case are likely the same as in the Kyocera action: that

defendants practice the claims of the patents-in-suit by selling products that access 3G cell

networks.3

Both Judge Lee and Judge Sabraw have already found, on virtually identical facts,

that this District was not as convenient as the Southern District of California to resolve SPH’s

infringement allegations. Although this action involves numerous defendants who were not in

the prior transferred suit, the defendants here also have no material connection to Virginia, but

many strong connections to California. As in the Kyocera case, the prominent supplier of the

accused technology is Qualcomm, which supplies chips used in accused products of at least 19 of

22 defendant groups. The transferee court already has experience litigating issues that will be

raised in this action – it has decided several motions relating to substantive issues in the case and

conducted an early evaluation of the parties claims and defenses. Moreover, the Southern

District of California is the home forum of a number of Defendants, including Sony, Sierra

Wireless, and Novatel Wireless and most importantly, third-party supplier Qualcomm.

Even if this were the first time this District had considered transfer, the facts support

transfer to California. While Plaintiff’s desire to litigate in this forum must be considered, it

should be afforded no deference where, as here, there is no meaningful link between the alleged

acts of infringement and the chosen forum. SPH is a shell corporation. It does not design,

manufacture, sell, or distribute any product in Virginia, nor does it practice the patents-in-suit.

3

Plaintiff has not expressly limited its claims to 3G cell networks, nor do Defendants

currently contend that they are so limited.


5

Instead, it purports to be a licensee of the five asserted patents, while the inventors and licensor

reside in Korea. The “business” of SPH is nothing more than acquiring patent licenses and filing

infringement actions.

In contrast, the defendants in this case and necessary third-party witnesses have

significant ties to California:

• Most of the defendant groups, including Acer, Apple, Fujitsu, HP, Huawei,

Nokia, Novatel Wireless, Palm, Sierra Wireless, Sony, Sony Ericsson and

UTStarcom reside in California or do business there.

• Most of the accused products appear to be designed in California, including those

of Amazon, Apple, HP, Novatel Wireless, Palm, Sierra Wireless, and Sony.

• The sales and marketing operations of many of the defendants take place in

California.

• San Diego-based Qualcomm supplies at least 19 of 22 defendant groups with

CDMA transceiver chips that allow the accused products to access 3G cell

networks. The features and operation of these chips will be at the heart of this

dispute.

• The Qualcomm witnesses with knowledge of the relevant operation of the chips,

and thus the accused products, all reside in or near San Diego.

• Qualcomm is also a major source of documents and key witnesses relating to

possible defenses based on participation of the patent owner in various standard

setting organizations, such as 3GPP and 3GPP2.

• At least one Qualcomm witness will have first-hand knowledge of the state of the

art, and it is believed that other witnesses who have been involved with the

development of the standards and CDMA technology that forms the prior art are

also located in California.

• To date, 24 witnesses have been identified by Defendants and Qualcomm as

residing in California and having relevant information important to assessing

SPH’s infringement allegations and the likely defenses of Defendants.4

4

Defendants believe that the number of actual witnesses with relevant information who

reside in California will be greater. Some defendants have not yet submitted declarations and

others were not able to identify specific witnesses at this time.


6

In short, California is far more convenient than Virginia to the parties and non-party

witnesses that will be asked to provide documents and testimony in this case. This action should

be transferred there.

II. FACTUAL BACKGROUND

A. The Lawsuit and Patents-In-Suit

SPH filed the present action against 44 defendants on July 6, 2009,5

alleging that the

defendants infringe U.S. Patent Nos. RE40,385 (“the ’385 patent”), 5,960,029 (“the ’029

patent”), 7,443,906 (“the ’906 patent”), and RE40,253 (“the ’253 patent”), which generally

concern Code Division Multiple Access (“CDMA”) technology.6

(D.I. 1.) SPH amended its

Complaint on September 9, 2009, to add defendants, including Fujitsu America, Inc., drop

defendants, including Option, Inc., and add another patent, U.S. Patent 7,586,973 (“the ‘973

patent”). (D.I. 98.) Collectively, these five patents have over 500 claims. SPH accuses a

number of the defendants’ products of infringing these patents by selling mobile handsets,

laptops with mobile broadband capability, and/or embedded modules used to provide mobile

broadband capability to laptops.7

(Id.) The assertions in this case appear to center on technology

used in CDMA communications that involves how a single radio signal can carry multiple voice

5

On that same day, SPH filed another lawsuit in this district against a different but

overlapping set of defendants including Nokia and Sony Ericsson, alleging infringement of

different SPH patents. See SPH America, LLC v. Apple, Inc. et al., No. 3:09cv776-REP (E.D.

Va.) (Jul. 6, 2009), D.I. 1 (“SPH 776 case”). The complaint in the SPH 776 case has yet to be

served. Once served, that action should also be transferred to the Southern District of California.

In addition to the contacts identified herein of the common defendants, two of the three named

inventors are identified on the face of the patents at issue in that case as residing in San Diego

(and the other is identified as residing in Cupertino, California).

6CDMA is a mobile phone wireless technology that relates to the methods by which

cellular telephone networks process telephone calls.

7The reference to “mobile broadband” in this brief refers to the use of CDMA

technology in computers to access 3G cell networks.


7

or data channels. The relevant functionality is present in integrated circuits (“chips”), used in the

accused cell phones or laptops, that allow users to make and receive calls and send and receive

data over 3G cellular networks. Defendants believe that none of the defendants named in this

action makes these chips. Rather, these chips are made by others, and either are incorporated

into the accused products directly or within modules purchased by Defendants and then

incorporated into accused products. The employees of third-party chip suppliers are therefore

critical to any discovery into the design, development, structure and operation relevant to the

claimed technologies, which are at the very heart of SPH’s infringement claims. Further, these

employees will have information important to damages issues, such as intervening rights.

The 41 defendants in this action8

can be divided into groups based on affiliation with the

operating entity that makes, uses, or sells the accused products. There are 22 defendant groups:

Acer, Amazon, Apple, Casio, Dell, Fujitsu, General Dynamics Itronix, HP, Huawei/Futurewei,

Motorola, Nokia, Novatel Wireless, Option, Palm, Panasonic, Personal Communications

Devices, Sierra Wireless, Sony, Sony Ericsson, UTStarcom, and ZTE. The defendants can be

placed into three different categories based on the types of products accused of infringing:

• Mobile handsets and handheld devices that can access 3G cell networks (e.g., cell

phones, PDAs): Amazon, Apple, Casio, Huawei, Motorola, Nokia, Palm,

Personal Communication Devices, Sony Ericsson, UTStarcom, and ZTE;

• Laptop computers that have built-in mobile broadband capability: Acer, Dell,

Fujitsu, General Dynamics Itronix, HP, Panasonic, and Sony; and

• Mobile broadband modules used in laptop computers to provide mobile

broadband capability: Novatel Wireless, Option, and Sierra Wireless.

8

Franklin Wireless Corp. and HP Development LLC were named defendants in the

original Complaint but were voluntarily dismissed by SPH from this lawsuit. (D.I. 11-12.)

Option Inc. and UTStarcom Personal Communications LLC were also named in the original

Complaint but were dropped from the amended Complaint (D.I. 98.)


8

At this time, no defendant has answered or otherwise responded to the Complaint, no

discovery has been taken, and no case management conference or status conference has been set.

B. Plaintiff SPH Does Not Have Meaningful Contacts With Virginia

SPH, while incorporated in Virginia, is a non-practicing patent holding entity with no

stronger tie to Virginia than to California. It was created by one man – Dr. Choongsoo Park – to

extract royalties and fees for the alleged use of SPH’s acquired patents. SPH does not

manufacture, sell, distribute, or otherwise provide any product in Virginia. Neither does SPH

appear to have employees or a presence in Virginia beyond Mr. Park and his office in Vienna,

Virginia.

Not one of the thirteen named inventors on the patents-in-suit resides in the United

States, let alone in or near Virginia. (See Exs. 1, 2, 3, 4.)9

All thirteen appear to be residents of

Korea and work for Electronics and Telecommunications Research Institute (“ETRI”), the

original assignee on the patents-in-suit. (Id.)

Based on the papers filed in the Kyocera case, SPH may assert that the prosecuting patent

attorneys and the administrative offices of two standard setting organizations are relevant

witnesses residing in Virginia. The patents-in-suit were prosecuted by Virginia patent attorneys

at the law firms of Hunton & Williams and Nixon & Vanderhye. (Id.) But to date, no

allegations of inequitable conduct regarding the patents-in-suit involve a failure to disclose by

any prosecuting attorney, and thus, these purported witnesses are not likely to be relevant. In

any event, the marginal relevance of these witnesses would be substantially outweighed by the

number of highly relevant witnesses in California.

9

“Ex.” refers to the exhibits attached to the brief. A list of exhibits is appended to this

brief.


9

ETRI and some of the named inventors may have participated in certain standard setting

organizations, namely the Third Generation Partnership Project 2 (“3GPP2”) and the

Telecommunications Industry Association (“TIA”), and failed to disclose their patents to those

organizations. This fact, however, does not necessarily indicate contact with 3GPP2 in Virginia

or that any witnesses or relevant documents are located in Virginia. The working groups of these

standard setting organizations are comprised of individual members (e.g., Motorola, Qualcomm,

Ericsson) that meet periodically and exchange documents among themselves. These individual

members and their employees are the relevant witnesses. Defendants are not aware of any such

members or witnesses located in Virginia. In fact, although these meetings take place under the

guise of 3GPP2, the work product exchanged remains the property of the individual member that

created it:

The work of producing 3GPP2's specifications resides in the Project's four

Technical Specification Groups (TSGs) comprised of representatives from the

Project's Individual Member companies. The TSGs are:

TSG-A (Access Network Interfaces)

TSG-C (cdma2000®)

TSG-S (Services and Systems Aspects)

TSG-X (Core Networks)

Each TSG meets, on average, ten times a year to produce technical specifications

and reports. Since 3GPP2 has no legal status, ownership and copyright of these

output documents is shared between the Organizational Partners. The documents

cover all areas of the Project's charter, including cdma2000® and its

enhancements.

(Ex. 5.) Even if the 3GPP2 Secretariat is considered a relevant connection to Virginia, it does

not outweigh the overwhelming connections of Defendants and third-party chip suppliers to

California.


10

C. Defendants Do Not Have Meaningful Contacts With Virginia

Not one of the defendants to this action is incorporated or principally does business in

Virginia. (See generally D.I. 1; Exs. 6-16.) In fact, not one of the defendants designs or

manufactures any accused products in Virginia. (Id.) It is unlikely that any witnesses with

relevant information about any defendant’s accused products, any prior art, or any information

significant to any claim or defense resides in Virginia. (Id.)

The only contacts that any defendant appears to have with Virginia are a handful of retail

stores run by Apple and Sony and certain facilities run by Amazon. (Ex. 6 ¶ 7; Ex. 7 ¶ 13; see

http://www.indeed.com/q-Amazon.com-l-Virginia-jobs.html.) No witnesses or documents from

these stores or Amazon’s facilities will likely be needed in discovery or at trial. Even if

witnesses and documents existed in such retail stores, these witnesses and documents would not

be unique to Virginia, as both Sony and Apple have more stores in California: Sony has 10 stores

in California but only 2 in Virginia; Apple has 45 stores in California but only 7 in Virginia.10

Amazon’s facilities in Virginia are not involved with design, development, manufacture, or sale

of the accused Amazon product, the Kindle. The Amazon Kindle is designed and developed in

California, and the persons most knowledgeable about the accused product are located in

California and Seattle, and not in Virginia. (Ex. 8 ¶¶ 4, 5.) No accused Amazon product is

designed, developed, or made in, or distributed from Virginia. (Id.)

10

See http://www.sonystyle.com/webapp/wcs/stores/servlet/ StoreCatalogDisplay?

langId=-1&storeId=10151&catalogId=10551&storeid; http://www.apple.com/retail/storelist/.


http://www.sonystyle.com/webapp/wcs/stores/servlet/StoreCatalogDisplay?

http://www.apple.com/retail/storelist/.

http://www.indeed.com/q-Amazon.com-l-Virginia-jobs.html.)

11

D. California Has A Strong Connection To The Parties, Witnesses, and Patents

1. Moving Defendants Have Relevant Witnesses and Documents in

California

In contrast to Virginia, California has significant ties to the defendants, potential

witnesses, and the subject matter of this lawsuit.

• 27 defendants are incorporated, have their principal place of business, or are

registered to do business in California. (D.I. 1 ¶¶ 2, 4, 9-10, 14, 16, 19, 20, 22;

D.I. 98 ¶ 8; Ex. 17.)

• 9 of 22 defendant groups have U.S. headquarters in California, including Acer,

Apple, HP, Fujitsu, Novatel Wireless, Palm, Sierra Wireless, Sony, and UT

Starcom. (D.I. 1 ¶¶ 2, 4, 7, 9, 14, 16, 19, 20, 22; D.I. 98 ¶ 8.) 3 defendant groups

have headquarters in and around San Diego, which is in the Southern District of

California: Sony (Sony Electronics), Sierra Wireless, and Novatel Wireless. (D.I.

1 ¶¶ 14, 19, 20.)

• At least 11 defendant groups have sales and marketing personnel in California.

(Exs. 6-16.) Acer, Apple, HP, Nokia, Novatel Wireless, Option, Palm, Sierra

Wireless, Sony, Sony Ericsson, and UT Starcom each have California sales and

marketing personnel. (Id.)

• At least 9 defendant groups have design and development activity relating to an

accused product within California. (Exs. 6-16, 27.) These groups include Apple,

HP, Nokia, Novatel Wireless, Palm, Sierra Wireless, Sony, and Sony Ericsson.

(Id.)

• At least 20 of 22 defendant groups use a California-based chip supplier for mobile

broadband; 19 use Qualcomm CDMA chips. (Exs. 6-16, 18.)

• Critical third-party witnesses reside in the San Diego area, including Qualcomm

personnel knowledgeable about the design and operation of the products using

Qualcomm chips and Qualcomm personnel involved with early work establishing

the standards that are the subject of the infringement assertion. (See Ex. 18.)

The chart below summarizes the extent of relevant activity in California among the

defendants in this action. Importantly, even if witnesses and documents are located in California

but outside the Southern District, that court has statewide subpoena power within California and

thus access to all sources of proof within the State. See Cal. Civ. Proc. Code § 1989; Fed. R.

Civ. P. 45(2)(C).


12

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11

The information on this chart was gathered based on the declarations of Defendants

and from public sources. “YY” designates a party with U.S. headquarters in California.


13

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2. Third-Party Qualcomm Has Important Witnesses and Documents in

the Southern District of California.

In addition to Defendants’ numerous contacts and witnesses in California, San Diego-

based Qualcomm, an important third-party chip supplier to at least 19 of the 22 defendant

groups, is located in the Southern District of California. Qualcomm is the largest supplier of

CDMA chips in the world. Its CDMA transceiver chips provide the very functions in

Defendants’ products that SPH accuses of infringing the over 500 claims of the five patents-in-

suit. (See Ex. 18 ¶ 8.) These chips were developed in the San Diego area by witnesses who

reside in the Southern District of California. (Id. ¶ 9.) Accordingly, the persons most

knowledgeable about the structure and operation of the Qualcomm chipsets used in the accused

devices (and any related confidential documents) will be found in the Southern District of

California. (Id.) There are numerous people from design teams at Qualcomm involved with and

knowledgeable about the development and design of these chips, including at least the following

individuals: Ming-chieh Kuo, Sean O’Leary, and Shabbir Halai. (Id.) These critical witnesses

are in the San Diego area, and absent transfer, they cannot be compelled to testify at trial. (Id.)

Although Defendants have yet to answer or otherwise respond to the Complaint, they

expect that certain defenses will be raised that relate to the development of the claimed

technology by others, the prior art, and the work by the named inventors and others in standard

setting organizations. Specifically, ETRI has been accused of concealing some of its patents-in-


14

suit during its work to develop the CDMA standards, lying in wait while the standards were

adopted and manufacturers invested heavily in developing products that use the standard.

Qualcomm was an early and active participant in the standards setting organizations. As a result,

Qualcomm will have institutional knowledge, witnesses, and documents relating to and

exchanged during the development of the standards relevant to this action. (Id. ¶ 10.)

3. California Is More Convenient For SPH’s Likely Witnesses

In stark contrast to the numerous highly material witnesses who are in California, Dr.

Park is likely the only Virginia-based witness who may be called at trial or deposed. The

inventors of the patents-in-suit and the licensor of the patents, ETRI, all reside in Korea. (Exs. 1-

4.) Moreover, ETRI is registered to do business in California and has a registered agent in

California. (Ex. 19.)

E. SPH’s Litigation History

SPH’s principal, Dr. Choongsoo Park, has a history of forum shopping. Dr. Park is the

principal in three non-practicing entities: SPH, WiAV Solutions, and WiAV Networks. Each

entity is nominally a Virginia limited liability corporation with the same address. Each has one

purpose – to pursue patent lawsuits and collect royalties.

Just last year, a court in this District transferred a lawsuit involving allegations of

infringement of the same patents to the Southern District of California. On July 9, 2008, SPH

sued Kyocera Wireless Corporation and Kyocera Sanyo Telecom Inc. (collectively “Kyocera”)

in this District,12

alleging infringement of three of the same patents-in-suit here – the ’385 patent,

the ’029 patent, and the ’253 patent. (Ex. 20); SPH America LLC v. Nokia Corp. et al., No.

1:09-cv-701 (E.D. Va.), D.I. 1.) The case was assigned to Judge Gerald Bruce Lee. Kyocera,

12

Also named in that lawsuit were HTC Corp. and Sony Ericsson. Both were dismissed

from the complaint prior to an answer. (Ex. 20.)


15

like many of the defendants here, does no business in and has no facilities or other contacts with

Virginia. (Ex. 21 at 4-5.) It is based in San Diego, California. (Id.) Kyocera relies on

Qualcomm, located in San Diego, as its CDMA chip supplier. (Id. at 5-6.) Qualcomm

employees were the most knowledgeable about the structure and operation of the CDMA

technology used in the accused Kyocera devices. (Id.) Recognizing the unfairness of forcing

Kyocera to defend this patent action in a venue to which it had no connection, the court ordered

the case transferred to the Southern District of California, a venue with far more connection to

the dispute.13

(See Ex. 22.) Specifically, Judge Lee determined that transfer to the Southern

District of California was warranted because “the balance of the witnesses [were in] California,

and not in Virginia,” and the court “could not conclude that because [SPH] brought the case [in

Virginia] and has one witness [t]here that’s a reason to keep this case in Virginia when the bulk

of the witnesses who [were] identified [were in California].” (Ex. 23, at 28.) After transfer, SPH

sought to "re-transfer" the case back to Virginia and was denied. (Ex. 26.)

While SPH’s lawsuit against Kyocera was still pending in California, SPH sued Nokia

and several other defendants on June 25, 2009, alleging infringement of the ’385 patent, one of

the patents at issue here and in the Kyocera California case. (Ex. 24.) That case was once again

assigned to Judge Lee. A week later, on July 2, 2009, the same day SPH dismissed its case

against Kyocera in California, SPH voluntarily dismissed the action before Judge Lee in the

Eastern District of Virginia without having served Nokia or any other defendant. (Ex. 25.) At

that point, SPH no longer had any pending cases in California or Virginia.

13

After Kyocera filed an inter partes reexamination of the ’385 patent and an ex parte

reexamination of the ’029 patent, Kyocera moved to stay the case pending the outcomes of the

two reexaminations that was granted. The case was later dismissed. (Ex. 20.)


16

Four days later, on July 6, 2009, SPH filed this case, adding three additional patents and

numerous defendants. (See D.I. 1.) By dismissing the earlier filed suit assigned to Judge Lee,

SPH successfully avoided Judge Lee the second time when the case was assigned to this Court.

III. ARGUMENT

Section 1404(a) provides:

[f]or the convenience of parties and witnesses, in the interest of justice, a district

court may transfer any civil action to any other district or division where it might

have been brought.

In a patent infringement action, “the preferred forum is that which is the center of the

accused activity . . . . The trier of fact ought to be as close as possible to the milieu of the

infringing device and the hub of activity centered around its production.” GTE Wireless, Inc. v.

Qualcomm, Inc., 71 F. Supp. 2d 517, 519 (E.D. Va. 1999). The Southern District of California is

clearly the center of activity for this action.

A. Transfer Is Appropriate Because This Action Could Have Been Brought in

the Southern District of California

As a threshold matter, this action could have been brought in the Southern District of

California. For a patent infringement action, proper venue is defined in 28 U.S.C. § 1400(b) as

any “district where the defendant resides.” For the purposes of venue, a corporation “resides” in

any district in which it was subject to personal jurisdiction at the time the action was filed. 28

U.S.C. § 1391(c). As to the particular claims brought by SPH in this action, Defendants are

subject to personal jurisdiction in the Southern District of California. Accordingly, SPH could

have brought this lawsuit in the Southern District of California in accordance with section

1404(a).14

14

Indeed, SPH’s general allegation that all defendants to the action “earn substantial revenue

each year selling [the accused devices] in the United States” suggests that SPH believes that all


17

B. Taken as a Whole, the Seven Factors Considered in the Transfer Analysis

Weigh in Favor of Transfer to the Southern District of California

Courts in The Fourth Circuit typically consider the following factors in deciding a motion

to transfer pursuant to section 1404(a): (i) plaintiff’s choice of forum, (ii) the convenience of

witnesses, (iii) the ease of access to sources of proof, (iv) the cost of obtaining the attendance of

witnesses, (v) the availability of compulsory process, (vi) the interest of having local

controversies decided at home, and (vii) the interests of justice. Southern Ry. Co. v. Madden,

235 F.2d 198 (4th Cir. 1956); see also BHP Int’l Inv. Inc. v. Online Exch., Inc., 105 F. Supp. 2d

493, 498 (E.D. Va. 2000); Verosol B.V. v. Hunter Douglas, Inc., 806 F. Supp. 582, 593 (E.D. Va.

1991). Among the several factors, principal considerations are the plaintiff's choice of forum,

witness convenience, access to sources of proof, and the interest of justice. Koh v. Microtek

Int’l, Inc., 250 F. Supp. 2d 627, 633 (E.D. Va. 2003). The question of whether to transfer venue

of a case rests in the sound discretion of the court. Southern Ry., 235 F.2d at 201. In the instant

case, each of the individual transfer factors either weighs heavily in favor of transfer or is

neutral, compelling a ruling in favor of transfer to the Southern District of California.

1. Plaintiff’s Choice of Forum Is Not Entitled to Any Deference

A plaintiff’s choice of forum is a relevant consideration provided that “there is a

connection between the forum and the plaintiff's claims that reasonably and logically supports

the plaintiff's decision to bring the case in the chosen forum.” Alberta Telecommunications

Research Ctr. v. Rambus Inc., No. 3:05-cv-789, 2006 WL 1049083, at *2 (E.D. Va. Apr. 12,

2006) (transfer order) (quoting Samsung Electronics Co. Ltd. v. Rambus Inc., 386 F. Supp. 2d

708, 716 (E.D. Va. 2005). “If there is little connection between the claims and [the chosen

of the defendants are amenable to jurisdiction and venue in the Southern District of California,

among others. (D.I. 1 ¶¶ 56-78; D.I. 98 ¶¶ 57-78.)


18

forum], that would militate against a plaintiff’s chosen forum and weigh in favor of transfer to a

venue with more substantial contacts.” Koh, 250 F. Supp. 2d at 635. Similarly, where the

“cause of action is at best only tenuously related to [the chosen forum], plaintiffs’ initial venue of

choice will not impede transfer if the relevant § 1404(a) factors point to another forum.”

Verosol, 806 F. Supp. at 593; see also GTE Wireless, Inc. v. Qualcomm, Inc., 71 F. Supp. 2d 517,

519 (E.D. Va. 1999) (the “preferred forum” for patent litigation is the “hub of activity centered

around the [accused products’] production”).

SPH’s only connection to this forum is its single office in Vienna, Virginia. But for this

office, SPH has no identifiable ties to this forum. Judge Lee previously recognized that such an

inconsequential contact did not require deference to SPH’s choice of forum. (Ex. 23.) The

Court should reach the same conclusion here.

There is no meaningful connection between the alleged acts of infringement and this

forum. The patented technology was not developed in Virginia or by SPH. SPH does not sell,

manufacture, distribute, or otherwise practice the patents-in-suit in the Eastern District of

Virginia. Rather, the patented technology was developed in Korea by SPH’s licensor, ETRI,

who has no contacts with Virginia. (See D.I. 1 .)

Indeed, SPH cannot show any connection between this forum and SPH’s infringement

claims. SPH generally alleges that the defendants “participate in a stream of commerce into the

United States including sales of the accused products” resulting in infringement in this District

(D.I. 1 ¶¶ 26-30; 32-47), but the mere sale of accused product in the stream-of-commerce is

insufficient to establish a meaningful connection between the alleged unlawful acts and this

forum. See In re TS Tech USA Corp., 551 F.3d 1315, 1318, 1321 (Fed. Cir. 2008) (finding

where a product is sold throughout the United States, no venue has any more or less of a


19

meaningful connection than any other due to sales in a particular venue); Walker v. Jon Renau

Collection, Inc., 423 F. Supp. 2d 115, 119 (S.D.N.Y. 2005) (“Where the nexus of the allegedly

infringing activity is in the transferee District, it is insufficient to find a connection” to the

original forum “based solely on sales of the product that took place [there].”); Energaire Corp. v.

E.S. Originals, Inc., No. 99 C 3252, 1999 WL 1018039, at *3 (N.D. Ill. Oct. 27, 1999) (“sales

alone are insufficient to establish a substantial connection to the forum if the defendant’s goods

are sold in many states”). Moreover, no Defendant engages in any design or manufacturing of

any accused product in Virginia. (See generally Exs. 6-16, 27.) The only sales operations in

Virginia are a handful of retail stores of Apple and Sony; no unique witnesses or documents

relevant to this lawsuit will be found in these stores. (Exs. 6 ¶ 7 & 7 ¶ 13) Further, although

Amazon has facilities in Virginia, no witnesses and documents relevant to its products in this

lawsuit will be found there. (Ex. 8.)

2. The Convenience of the Parties and Witnesses Strongly Favors

Transfer

The convenience of witnesses is “often dispositive in transfer decisions.” Koh at 636.

Importantly, not all witness testimony is treated equally in the court’s analysis. For example,

while inconvenience to a witness whose testimony is not essential is not afforded much weight,

inconvenience to witnesses whose testimony is central to a claim and whose credibility is likely

to be an important issue is given great weight. See id. Further, “[w]hen considering the

convenience of witnesses, this court draws a distinction between party-witnesses and non-party

witnesses and affords greater weight to the convenience of non-party witnesses.” Lycos, Inc. v.

TiVO, Inc., 499 F. Supp. 2d 685, 693 (E.D. Va. 2007).


20

a. The Southern District of California is More Convenient Than

Virginia for Material U.S. Witnesses

The number of potential witnesses that reside in and around California in this case itself

is sufficient to warrant transfer. Far more witnesses reside in California than in Virginia, and the

California witnesses possess the vast majority of the information necessary to resolve SPH’s

infringement allegations. Those allegations focus on how the accused products implement the

accused CDMA technology and how these products were designed and developed. There are at

least twelve witnesses in California identified by Defendants who are knowledgeable regarding

the structure and operation of accused products and how CDMA technology may be

implemented in those products. (See Exs. 6-16, 27.) In addition, there are at least 7 witnesses in

California identified by Defendants who are knowledgeable regarding sales and marketing for

accused products. (See generally id.).

More importantly, Qualcomm is a supplier of CDMA chips used by at least 19 of the 22

defendant groups in the accused products. (see Exs. 18 ¶ 8, 6-16) There are at least three third-

party Qualcomm witnesses located in San Diego that are knowledgeable about the specific

implementation of CDMA technology in many of the accused products. (Id. ¶ 9.) Qualcomm

witnesses also will have knowledge of prior art activities and the development of similar

technology by participants in working groups related to standards setting organizations in this

field. (Id. ¶ 10.) In fact, one prior art reference that Defendants believe invalidates the claims of

the patents-in-suit is a patent to Edward G. Tiedemann, Jr., a Qualcomm employee and named

inventor on prior-art U.S. Patent 5,930,230. (Id.) The Southern District of California will be far

more convenient for Qualcomm witnesses than this forum. Given the greater weight generally

afforded to the convenience of third-party witnesses, the numerous third-party witnesses from

Qualcomm weighs heavily in favor of transfer. See, e.g., Lycos, 499 F. Supp. 2d at 693.


21

In contrast, SPH will only be able to identify one potential witness with relevant

information – Dr. Park – who resides in Virginia.15

SPH undoubtedly will identify Dr. Park’s

residence in Virginia as a basis for arguing that transfer would be inconvenient. But Dr. Park’s

testimony would likely be limited in scope (i.e., purchase of the rights in the patents-in-suit, his

pre-trial investigation into infringement, licenses granted to others under the patents-in-suit), and

will not touch on the key issues of infringement or validity. Thus, Dr. Park’s convenience is

substantially outweighed by the convenience of the numerous party and third-party witnesses in

and near California whose testimony lies at the heart of this dispute.

While the location of a party’s counsel is typically not given substantial weight, when

considering the convenience to SPH, it is noteworthy that half of the attorneys that are of record

in this matter (excluding local counsel) on behalf of SPH are based in California. SPH’s only

business is to assert its patents and the assertion of the patents in this case appears to have been

spear-headed by SPH's counsel in California. Because SPH voluntarily selected California-

based counsel, it seems incongruous that having these attorneys litigate closer to home could be

viewed as inconvenient to SPH.

As Judge Lee concluded in the Kyocera case, transfer to the Southern District of

California is warranted because “the balance of the witnesses [are in] California, and not in

Virginia,” and SPH’s lone potential witness in Virginia is simply not a compelling reason to keep

this case in Virginia. (See Ex. 23, at 28.)

15

SPH may argue that the 3GPP2 Secretariat and the prosecuting attorneys are also

potential witnesses. Even assuming this as true, these witnesses do not affect the balance of

witnesses, which heavily favors California.


22

b. Considering the Inconvenience of Foreign Witnesses Does Not

Change the Analysis

Because foreign witnesses will be required to travel significant distances no matter where

a case is pending, this Court should afford greater weight to witnesses residing in the United

States for whom traveling to one forum as opposed to another can amount to significant

inconvenience. See In re Genentech Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009) (finding that

according significant weight to the inconvenience of European witnesses was inappropriate

because “[i]n contrast to the foreign witnesses, there are a substantial number of witnesses

residing within the transferee venue who would be unnecessarily inconvenienced by having to

travel away from home to testify in the Eastern District of Texas”). Here, foreign witnesses will

likely include the inventors in Korea and witnesses related to certain defendants. Because these

witnesses will travel to attend trial in the United States regardless of the forum, the impact of a

transfer is likely to be minimal. Nevertheless, the Southern District of California is likely to be

more convenient for the Korean inventors because the travel time is typically less than that

required for East Coast travel. Accordingly, the convenience of even these foreign witnesses

favors transfer.

3. The Ease of Access to Sources of Proof Favors Transfer

Coupled with the convenience of witnesses, the parties’ “access to sources of proof is

‘often dispositive’ in § 1404(a) motions.” Kabat v. Bayer Cropscience LP, 2008 WL 2156744,

*3 (E.D. Va. May 22, 2008) (citing Koh, 250 F. Supp. 2d at 633). Indeed, “[i]n a patent

infringement action, as a general rule ‘the preferred forum is that which is the center of the

accused activity . . . [t]he trier of fact ought to be as close as possible to the milieu of the

infringing device and the hub of activity centered around its production.’” GTE, 71 F. Supp. 2d

at 519 (transferring action from Eastern District of Virginia to Southern District of California).


23

Here, the “center of accused activity,” including the sources of proof in this litigation (i.e.,

documents) is located in California, and more particularly, the Southern District of California.

As described above, there are many party and non-party witnesses in California with

relevant knowledge. Those witnesses, and the parties with which they are affiliated, also have

documents. For example, Palm, Sony, Sierra Wireless, Novatel Wireless, Nokia, and Apple all

have documents in their California facilities and in the possession of their witnesses relevant to

this action. (See Ex. 27; Ex. 7 ¶ 14; Ex. 15 Dec. ¶¶ 10-12; Ex. 14 ¶ 11; Ex. 12 ¶ 13; Ex. 11; Ex.

6 ¶ 6.) Moreover, documents concerning the development of the Qualcomm CDMA chipsets are

located in San Diego, California, where Qualcomm is headquartered and where Qualcomm’s

CDMA Technologies division is based. (See Ex. 18 ¶¶ 1, 9.) California affords much better

access to the court to sources of proof.

4. The Interests of Justice Favor Transfer.

“[T]he principal factor animating a transfer under §1404(a) is the ‘interest of justice’

factor.” Alberta, 2006 WL 1049083, at *3. The interest of justice “encompasses a number of

factors including ‘public interest factors aimed at ‘systemic integrity and fairness.’” Id. Courts

in this District recognize that, among the considerations to be taken into account in ascertaining

systemic integrity is “the assessment of whether a party is attempting to ‘game the federal courts

through forum manipulation.’” Id. (citation omitted). In Alberta, Judge Payne found transfer to

the Southern District of California was appropriate where the plaintiff had engaged in forum

manipulation by “pressing . . . a claim with…very little connection to the forum”. Id.

Here, there is substantial evidence of “gam[ing] the federal courts through forum

manipulation.” Not only has SPH pressed infringement claims that have “very little connection”

to the Eastern District of Virginia as the plaintiff did in Alberta, it appears that SPH has engaged

in deliberate gamesmanship to manipulate the assignment of judges. Indeed, instead of simply


24

amending its complaint, SPH inexplicably dismissed its initial action against Nokia and other

defendants in this District (filed on June 25, 2009) one week after the case was assigned to Judge

Lee, who had originally transferred SPH’s claims against Kyocera to California (Exs. 24 & 25),

only to re-file its lawsuit against a larger group of defendants four days later. SPH's strategy was

rewarded with the assignment of the second filed case to this Court rather than Judge Lee.

There is no legitimate explanation for SPH to file, dismiss, and re-file against some of the

same defendants. If SPH desired to add defendants, it was well within its right to file an

amended complaint in the first action involving Nokia, as no party had answered. See Fed. R.

Civ. P. 15(a). In fact, that is precisely what SPH did recently when it added a patent and three

new defendants in its Amended Complaint. (See D.I. 98.) The only plausible explanation is that

SPH sought to avoid Judge Lee. This Court should not permit SPH to benefit from its “judge

shopping” to the detriment of the “systemic integrity” of this Court. The Court should transfer

this case consistent with Judge Lee’s prior ruling.

5. The Remaining Factors Do Not Weigh Against Transfer

As set forth above, the Southern District of California is a more convenient forum

because relevant witnesses are located in that forum, and few are located in Virginia. For the

same reason, the time and money required for travel to the Southern District of California for

those witnesses is likely to be significantly less than from California to Virginia.

Moreover, crucial non-party Qualcomm witnesses will be involved in this litigation.

Thus, the availability of compulsory process factor, pursuant to Federal Rule of Civil Procedure

45(c)(3)(A)(ii), favors transfer, because the Southern District of California has the power to

compel attendance of any of the numerous California-based witnesses, who would be outside the

subpoena of power of this Court. See Fed. R. Civ. P. 45; Cal. Civ. Proc. Code § 1989 (allowing

statewide service of process in California).


25

The Court’s interest in having local controversies decided at home is applied typically

where issues of local law must be decided. See Coors Brewing Co. v. Oak Beverage, Inc., 549 F.

Supp. 2d 764, 773 (E.D. Va. 2008) (holding that factor weighed in favor of transfer to New York

because case required interpretation of New York statute). SPH’s causes of action all sound

under federal patent law, however, which Virginia has no greater interest in than California.

Thus, it is unlikely that the Court would be required to interpret any local issues of law in this

litigation. Accordingly, the Court’s interest in this matter is neutral.

IV. CONCLUSION

Because the principal factors under Section 1404(a) – the convenience of the parties and

witnesses and the interests of justice – favor transfer to the Southern District of California,

Defendants respectfully request that the Court grant this motion and issue an order transferring

this action as to all defendants to the Southern District of California.


26

Dated: September 10, 2009

Of Counsel:

Kevin P.B. Johnson

QUINN EMANUEL URQUHART

OLIVER & HEDGES LLP

555 Twin Dolphin Drive, Suite 560

Redwood Shores, CA 94065

Tel: 650-801-5000

Fax: 650-801-5100

[email protected]

Eric Huang


OLIVER & HEDGES LLP

51 Madison Avenue, 22nd

Floor

New York, NY 10010

Tel: 212-849-7000

Fax: 212-849-7100

[email protected]

FOR DEFENDANTS SONY

CORPORATION OF AMERICA & SONY

ELECTRONICS INC.

By: /s/ Brian C. Riopelle

Brian C. Riopelle (VSB #36454)

McGUIREWOODS LLP

One James Center

901 E. Cary Street

Richmond, VA 23219

Tel: 804-775-1000

Fax: 804-775-1061

[email protected]

Counsel for Defendants Sony Corporation of

America & Sony Electronics Inc.


27

Of Counsel:

Kevin P.B. Johnson


OLIVER & HEDGES LLP

555 Twin Dolphin Drive, Suite 560

Redwood Shores, CA 94065

Tel: 650-801-5000

Fax: 650-801-5100

[email protected]

Eric Huang


OLIVER & HEDGES LLP

51 Madison Avenue, 22nd

Floor

New York, NY 10010

Tel: 212-849-7000

Fax: 212-849-7100

[email protected]

FOR DEFENDANT SONY ERICSSON

MOBILE COMMUNICATIONS (USA)

INC.

By: /s/ Brian C. Riopelle

Brian C. Riopelle (VSB #36454)

McGUIREWOODS LLP

One James Center

901 E. Cary Street

Richmond, VA 23219

Tel: 804-775-1000

Fax: 804-775-1061

[email protected]

Counsel for Defendant Sony Ericsson Mobile

Communications (USA) Inc.

FOR DEFENDANT ACER, INC. & ACER

AMERICA CORPORATION

By: /s/ Preston Burton

Preston Burton (SBN 30221)

VA Bar No. 30221

ORRICK, HERRINGTON & SUTCLIFFE

LLP

Columbia Center

1152 15th Street, N.W.

Washington, D.C. 20005-1706

Tel. No. 202-339-8400

Fax No. 202-339-8500

[email protected]

Counsel for Defendants Acer, Inc. & Acer

America Corporation


28

FOR DEFENDANT AMAZON.COM, INC.

By: /s/ Michael W. Robinson

Michael W. Robinson

VENABLE LLP

8010 Towers Crescent Drive, Suite 300

Vienna, VA 22182

Tel. 703-760-1988

Facsimile 703-821-8949

[email protected]

Counsel for Defendant Amazon.com, Inc.

FOR DEFENDANT APPLE INC.

By: /s/ Melanie D. Coates

James L. Quarles (VSB 44993)

Melanie D. Coates (VSB 38682)

WILMER CUTLER PICKERING

HALE AND DORR LLP

1875 Pennsylvania Avenue N.W.

Washington, D.C. 20006

Telephone: (202) 663-6000

Facsimile: (202) 663-6363

[email protected]

[email protected]

Counsel for Defendant Apple Inc.


29

Of Counsel:

Paul D. Ackerman (pro hac vice )

DORSEY & WHITNEY. LLP

250 Park Avenue

New York, NY 10177-1500

Telephone: (212) 415-9372

Facsimile: (212) 953-7201

Email: [email protected]

Gary Abelev (pro hac vice )

DORSEY & WHITNEY. LLP

250 Park Avenue

New York, NY 10177-1500

Telephone: (212) 415-9371

Facsimile: (212) 953-7201


FOR DEFENDANTS CASIO AMERICA,

INC. & CASIO CORPORATION OF

AMERICA, INC.

By: /s/ Megan S. Ben’Ary

Megan S. Ben’Ary (VSB 47439)

LECLAIRRYAN

225 Reinekers Lane, Suite 700

Alexandria, Virginia 22314

Telephone: (703) 647-5933

Facsimile: (703) 647-5983


Counsel for Defendants Casio America, Inc.

and Casio Corporation of America, Inc.


30

Of Counsel:

Laurin H. Mills (MD Bar No. 09462)

Pro Hac Vice to be filed

[email protected]

NIXON PEABODY LLP

401 9th Street, N.W., Suite 900


Tel No. 202 585 8515

Fax No. 866 947 3689

Robert E. Krebs (CA Bar No. 57526)


Christopher L. Ogden (CA Bar No. 235517)


NIXON PEABODY LLP

200 Page Mill Road, 2nd

Floor

Palo Alto, CA 94306

Tel No. 650 320 7700

Fax No. 640 320 7701

[email protected]

[email protected]

Ronald Lopez (CA Bar No. 111756)


NIXON PEABODY LLP

One Embarcadero Center, 18th

Floor

San Francisco, CA 94111-3600

Tel No. 415 984 8200

Fax No. 415 984 8300

[email protected]

FOR DEFENDANT GENERAL

DYNAMICS ITRONIX CORP.

by____/s/ Benjamin T. Hickman

Benjamin T. Hickman (VSB No. 74992)

NIXON PEABODY LLP

401 9th Street, N.W., Suite 900


TEL: (202) 585-8000

FAX: (202) 585-8080

[email protected]

Counsel for Defendant General Dynamics

Itronix Corp.


31

Of Counsel:

Gregory Commins (pro hac vice)

HOWREY LLP

1299 Pennsylvania Avenue, N.W.

Washington, DC 20004

Tel: 202-383-6963

Fax: 202-383-9858

[email protected]

FOR DEFENDANT MOTOROLA, INC.

By: /s/ Andrew R. Sommer

Andrew R. Sommer (VSB # 70304)

HOWREY LLP



Tel: 202-383-6950

Fax: 202-383-9858

[email protected]

Counsel for Motorola, Inc.

Of Counsel:

Ross R. Barton (VSB 67937)

ALSTON & BIRD LLP

Bank of America Plaza

Suite 4000

101 S. Tryon Street

Charlotte, NC 28280-4000

Telephone: (704)-444-1000

Facsimile: (704)-444-1111

[email protected]

Michael J. Newton (pro hac vice pending)

ALSTON & BIRD LLP

Chase Tower

2200 Ross Avenue

Dallas, TX 75201

Telephone: (214)-922-3400

Facsimile: (214)-922-3899

[email protected]

FOR DEFENDANT NOKIA INC.

By: /s/ Craig C. Reilly

Craig C. Reilly, Esq. (VSB 20942)

111 Oronco Street

Alexandria, VA 22314

Telephone: (703)-549-5354

Facsimile: (703)-549-2604

[email protected]

Of Counsel:

Frank G. Smith (pro hac vice pending)

John D. Haynes (pro hac vice pending)

Keith E. Broyles (pro hac vice pending)

ALSTON & BIRD LLP

1201 West Peachtree Street

Atlanta, GA 30309-3424

Telephone: (404)-881-7000

Facsimile: (404)-881-7777

[email protected]

[email protected]

[email protected]

Counsel for Defendant Nokia Inc.


32

Of Counsel:

Michael J. Bettinger

Timothy P. Walker

K&L GATES LLP

4 Embarcadero Center

Suite 1200

San Francisco, CA 94111

Tel: 415-882-8200

Fax: 415-882-8220

[email protected]

[email protected]

FOR DEFENDANTS NOVATEL

WIRELESS INC., NOVATEL WIRELESS

SOLUTIONS, INC., & NOVATEL

WIRELESS TECHNOLOGY, INC.

By: /s/ Eric C. Rusnak

Eric C. Rusnak (VA Bar #65895)

K&L GATES LLP

1601 K Street, NW


Tel: 202-778-9000

Fax: 202-778-9100

[email protected]

Counsel for Novatel Wireless, Inc., Novatel

Wireless Solutions, Inc. & Novatel Wireless

Technology, Inc.

FOR DEFENDANTS OPTION N.V. &

OPTION WIRELESS USA, INC.

By: /s/ Andrew R. Sommer

Andrew R. Sommer (VSB # 70304)

HOWREY LLP



Tel: 202-383-6950

Fax: 202-383-9858

[email protected]

Counsel for Defendants Option N.V. and

Option Wireless USA, Inc.


33

FOR DEFENDANT PALM, INC.

By: /s/ David E. Finkelson

David E. Finkelson

McGUIREWOODS LLP

One James Center

901 E. Cary Street

Richmond, VA 23219

Tel: 804-775-1000

Fax: 804-775-1061

[email protected]

Counsel for Defendant Palm, Inc.

Of Counsel:

AMSTER, ROTHSTEIN & EBENSTEIN LLP

Daniel Ebenstein (Pro Hac Vice)

Abraham Kasdan (Pro Hac Vice)

Joseph Casino (Pro Hac Vice)

Marc J. Jason (Pro Hac Vice)

90 Park Avenue

New York, New York 10016

Tel.: (212) 336-8000

Fax: (212) 336-8001

FOR DEFENDANTS PANASONIC

CORPORATION, PANASONIC

CORPORATION OF NORTH AMERICA,

PANASONIC CONSUMER

ELECTRONICS COMPANY AND

PANASONIC ELECTRONIC DEVICES

CORPORATION OF AMERICA

By: /s/ E. Andrew Burcher

E. Andrew Burcher, VSB #41310

Michael Kalish, VSB #73090

WALSH, COLUCCI, LUBELEY,

EMRICH & WALSH, P.C.

4310 Prince William Parkway, Suite 300

Prince William, VA 22192

Phone: (703) 680-4664

Fax: (703) 680-2161

[email protected]

[email protected]

Counsel for Defendants Panasonic

Corporation, Panasonic Corporation Of North

America, Panasonic Consumer Electronics

Company And Panasonic Electronic Devices

Corporation Of America


34

Of Counsel:

Robert E. Krebs

NIXON PEABODY LLP

200 Page Mill Road, 2nd Floor

Palo Alto, California 94306

Tel: (650)320-7743

Fax: (650) 320-7701

[email protected]

Laurin H. Mills

NIXON PEABODY LLP


Suite 900


United States of America

Tel: 202-585-8000

Fax: 202-585-8080

[email protected]

FOR DEFENDANTS SIERRA WIRELESS,

INC. & SIERRA WIRELESS AMERICA,

INC.

By: ____/s/ Laurin H. Mills

Benjamin T. Hickman (VSB #74992)

NIXON PEABODY LLP


Suite 900


United States of America

Tel: 202-585-8000

Fax: 202-585-8080

[email protected]

Counsel for Defendants Sierra Wireless, Inc.

& Sierra Wireless America, Inc.

FOR DEFENDANT UTSTARCOM, INC.

By: /s/ Dana D. McDaniel

Dana D. McDaniel (VSB No. 25419)

SPOTTS FAIN PC

411 East Franklin Street, Suite 600

Richmond, Virginia 23219

Phone: (804) 697-2065

Fax: (804) 697-2165

E-mail: [email protected]

Counsel for Defendant UTStarcom, Inc.


35

CERTIFICATE OF SERVICE

I hereby certify that this document filed through the ECF system will be sent

electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)

and paper copies will be sent to those indicated as non-registered participants on this 10th day of

September, 2009.

/s/ Brian C. Riopelle________________

By Counsel

Brian C. Riopelle (VA Bar No. 36454)

McGUIREWOODS LLP

One James Center

901 East Cary Street

Richmond, Virginia 23219-4030

Tel: (804) 775-1000

Fax: (804) 775-1061

[email protected]


i

LIST OF ATTACHED EXHIBITS

Exhibit 1 U.S. Patent RE40,385

Exhibit 2 U.S. Patent 5,960,029

Exhibit 3 U.S. Patent 7,443,906

Exhibit 4 U.S. Patent RE40,253

Exhibit 5 Printout of website entitled “About 3GPP2,” available at

http://www.3gpp2.org/Public_html/Misc/AboutHome.cfm

Exhibit 6 Declaration of Joni B. Reicher In Support Of Defendant Apple, Inc.’s Motion

To Transfer Venue To The Southern District Of California Pursuant To 28

U.S.C. § 1404(a) [APPLE, INC.]

Exhibit 7 Declaration of Jaime A. Siegel (Sony) In Support Of Defendants’ Motion To

Transfer Venue Pursuant To 28 U.S.C. § 1404 [SONY ELECTRONICS, INC.]

Exhibit 8 Declaration of Kevin Keller for Amazon.com, Inc. in Support of Motion to

Transfer Venue Pursuant to 28 U.S.C. § 1404(a) [AMAZON.COM, INC.]

Exhibit 9 Declaration of John Schneider in Support of Defendants’ Motion to Transfer

Venue Pursuant to 28 U.S.C. § 1404(a) [GENERAL DYNAMICS ITRONIX

CORP.]

Exhibit 10 Declaration of Hwee Voon Chai in Support of Motion to Transfer Venue

Pursuant to 28 U.S.C. § 1404(a) By Defendant Motorola, Inc. [MOTOROLA,

INC.]

Exhibit 11 Declaration of Jari Niemela in Support of Defendants’ Motion to Transfer

Venue Pursuant to 28 U.S.C. § 1404(a) by Defendant Nokia Inc. [NOKIA

INC.]

Exhibit 12 Declaration of Chris Ross in Support of Defendants’ Motion to Transfer Venue

Pursuant to 28 U.S.C. § 1404(a) [NOVATEL WIRELESS INC.; NOVATEL

WIRELESS SOLUTIONS, INC.; NOVATEL WIRELESS TECHNOLOGY,

INC.]

Exhibit 13 Declaration of Chip Federking in Support of Defendants’ Motion to Transfer

Venue Pursuant to 28 U.S.C. § 1404(a) [OPTION WIRELESS USA INC.;

OPTION N.V.]

Exhibit 14 Declaration of James Kirkpatrick in Support of Motion to Transfer Venue

Pursuant to 28 U.S.C. § 1404(a) By Sierra Wireless, Inc. [SIERRA

WIRELESS, INC.; SIERRA WIRELESS AMERICA, INC.]


http://www.3gpp2.org/Public_html/Misc/AboutHome.cfm

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Exhibit 15 Declaration of Lee Hill (Sony Ericsson) in Support of Defendants’ Motion to

Transfer Venue Pursuant to 28 U.S.C. § 1404(a) [SONY ERICSSON MOBILE

COMMUNICATIONS (USA), INC.]

Exhibit 16 Declaration of Victor Aghion in Support of Motion to Transfer Venue Pursuant

to 28 U.S.C. § 1404(a) By Defendants UTSTARCOM, Inc. et al.

[UTSTARCOM, INC.

Exhibit 17 Results of a Corporate Record & Business Registration search from Westlaw

reflecting the registrations in California of defendants Motorola, Inc. Nokia,

Inc., Palm, Inc., Personal Communications Devices, LLC, Sony Ericsson

Mobile Communications (USA) Inc., UTSTARCOM, Inc., Acer, Inc., Casio

America, Inc., General Dynamics Itronix Corp., Hewlett Packard Co., Novatel

Wireless, Inc., Option Wireless USA, Inc., Panasonic Corp. of North America,

Panasonic Electronic Devices Corp. of America, Sierra Wireless America, Inc.,

Sony Corp. of America, Sony Electronics, Inc., Lenovo (United States) Inc.,

and ZTE (USA) Inc.

Exhibit 18 Declaration of Donald Sullivan in Support of Motion to Transfer Venue

Pursuant to 28 U.S.C. § 1404(a) by Defendants [QUALCOMM, INC.]

Exhibit 19 California corporate registration for Electronics & Telecommunications

Research Institute (“ETRI”) reflecting the fact that on August 14, 2009, ETRI

registered as a corporation doing business in California and designated an agent

for service of process in Saratoga, California.

Exhibit 20 Printout from PACER of the docket from SPH America LLC v. High Tech

Computer Corp. et al., Action No. 3:08!cv!02146 (S.D. Cal.).

Exhibit 21 October 27, 2008 Memorandum in Support of Motion to Transfer Pursuant to

28 U.S.C. ¶ 1404(a) by Defendants Kyocera Wireless Corporation and Kyocera

Sanyo Telecom, Inc. filed in SPH America LLC v. High Tech Computer Corp.,

et al., No. 1:08-cv-702 (E.D. Va)

Exhibit 22 Judge Gerald Bruce Lee’s order transferring Action No. 08-702 (E.D. Va.) to

the U.S. District Court for the Southern District of California

Exhibit 23 Nov. 14, 2008 transcript of proceedings before Judge Gerald Bruce Lee in

Action No. 08-702 (E.D. Va.)

Exhibit 24 June 25, 2009 Complaint filed by SPH in SPH America LLC v. Nokia

Corporation et al., No. 1:09-cv-701 (E.D. Va.)

Exhibit 25 July 2, 2009 Notice of Dismissal filed by SPH in SPH America LLC v. Nokia

Corporation et al., No. 1:09-cv-701 (E.D. Va.)


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Exhibit 26 Judge Dana Sabraw’s March 4, 2009 Order Denying SPH’s Motion to

ReTransfer Case in SPH America LLC v. High Tech Computer Corp., 08-cv-

2146 (S.D. Cal.)

Exhibit 27 Declaration of Frank Young (Palm) in Support of Defendants' Motion to

Transfer Venue Pursuant to 28 U.S.C. § 1404(a) [PALM, INC.]
