Wednesday, February 19, 2014

Jason Atchley : IP Law : Google and Rockstar Spar Over Venue

Google and Rockstar Spar Over Venue

Maria Zilberman, The Recorder

February 17, 2014 |0 Comments

SAN FRANCISCO — In case it wasn’t already crystal clear that plaintiffs and defendants in patent suits have different ideas about where they want to litigate, another nasty East Texas-Northern California turf fight has broken out, this time between Google Inc. and Rockstar Consortium, the IP firm partly owned by Apple.

The feud started when Rockstar filed a spate of suits in the Eastern District of Texas against gadget-makers who use Google’s Android platform. Mountain View-based Google upped the ante in December with a declaratory judgment action in the Northern District of California.

Now lawyers at Quinn Emanuel Urquhart & Sullivan and McKool Smith are trading blows in a venue fight, each accusing the other of blatant forum-shopping.

“There is only one reasonable place to conduct this litigation: California,” argued Google’s lawyers at Quinn in a Feb. 6 court filing.

“California is not even an option for this litigation, and Google’s contrary view squarely conflicts with controlling law,” McKool Smith lawyers retorted in a brief filed Feb. 13.

Rockstar wants Google’s suit to be tossed, or at least transferred. Its lawyers contend the California court lacks jurisdiction over Rockstar and its wholly owned subsidiary MobileStar Technologies LLC, which owns or holds an exclusive license to the seven patents at issue. Moreover, Rockstar insists it was the first to file suit and its choice of venue trumps.

“Google’s effort to invoke the Declaratory Judgment Act invites precisely the kind of inefficient, duplicative litigation (and risk of inconsistent results) that the Act will not tolerate,” Rockstar’s lawyers argued.

The so-called first-to-file rule allows a federal court to refuse to hear a case if issues substantially overlap with those raised in an earlier-filed case. Transfer is discretionary.

Meanwhile, Google also claimed that it was the first to file, pointing out that Rockstar amended one of its pending suits in the Eastern District of Texas to include Google roughly a week after Google filed its declaratory judgment action.

“Rockstar admittedly sued Google only after Google brought [the declaratory judgment filing],” the company asserted.

Google is represented by Quinn Emanuel partners Sean Pak, Amy Candido and Matthew Warren. The team also seized on Rockstar’s origins as a patent holding company to support its jurisdictional arguments.

Rockstar was created out of the 2011 bankruptcy of Nortel Networks. Apple, Microsoft, Research in Motion Inc., and other Google competitors paid $4.5 billion to acquire Nortel’s patent portfolio, outbidding Google. Apple contributed approximately $2.6 billion of that sum.

Rockstar transferred thousands of U.S. and foreign patents to its owners and reorganized itself as a patent licensing business that produces no products. It formed MobileStar one day before filing its spate of lawsuits in October.

Google contended that Rockstar’s ties to Nortel, which did business in California, and its links to Apple both give rise to jurisdiction. The Quinn Emanuel lawyers also noted that Google’s Android platform is “designed, developed, tested, and built primarily here in California.”

Rockstar’s team, which includes McKool Smith founder Mike McKool in Dallas and partner Courtland Reichman in Redwood Shores, Calif., took different view. “Google cannot sue Rockstar in California by saying it could have sued Apple or Nortel in California,” Rockstar’s lawyers insisted. “Personal jurisdiction is personal, and Google has not shown Rockstar itself is subject to suit in this Court.”

As for MobileStar, the team wrote: “If Google wishes to hale MobileStar into court, it has to establish jurisdiction using MobileStar’s contacts."

In its response motion, Google specifically pushed back against Rockstar’s contention that MobileStar cannot be tried in California, calling the argument a “too clever by half assertion of immunity by subsidiary.” It cited Dainippon Screen Manufacturing v. CFMT, a 1998 decision from the U.S. Court of Appeals for the Federal Circuit.

“Rockstar’s argument … would be an awfully neat trick—had the Court of Appeals not already considered and rejected it,” Google stated.

A hearing is scheduled March 13 before U.S. District Judge Claudia Wilken in Oakland.

ALM staff contributed to this report.

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Tuesday, February 18, 2014

Jason Atchley : IP Law : Spies, Trolls, and the NSA

jason atchley

Tech Circuit: Spies & Trolls Edition

Will SCOTUS Revisit NSA? Are Universities Patent Trolls?

Monica Bay, Law Technology News

February 18, 2014 |0 Comments

The tension between privacy and security seems to be escalating by the minute. (It certainly was front-and-center at LegalTech New York.) Saturday, The New York Times reported that another top-secret document, obtained by former National Security Agency consultant Edward Snowden, "shows that an American law firm was monitored while representing a foreign government in trade disputes with the United States."

"The disclosure offers a rare glimpse of a specific instance in which Americans were ensnared by the eavesdroppers, and is of particular interest because lawyers in the United States with clients overseas have expressed growing concern that their confidential communications could be compromised by such surveillance," wroteJames Risen and Laura Poitras. Speculation is that the affected firm is Chicago-based Mayer Brown, which represented the Indonesian government, they reported.

The development may have other ramifications, observed ALM's LegalTimes. Marcia Coyle predicts that the developments "may provide new impetus for the U.S. Supreme Court to revisit a 2013 decision that involved electronic surveillance law."

"The justices, if they wish, have a vehicle for reconsidering their 5-4 decision in Clapper v. Amnesty International USA. The Center for Constitutional Rights last month filed a petition for review asking the high court to hear their challenge to surveillance by the NSA in light of Edward Snowden's revelations about the extent of the surveillance program."

>> Patent Troll Alert: While we're in paranoia mode, here's something else to be worried about. Robin Feldman, a professor at the University of California's Hastings College of the Law, and W. Nicholson Price, an academic fellow at Harvard Law School, have released study results that suggest that despite conventional wisdom otherwise, the bio-pharmaceutical industry is not immune from patent trolls. Feldman calls the study a "warning bell."

If you aren't fluent in patent/academic jargon: patent trolls include non-practicing entities, patent assertion entities, and patent monetizers, says Feldman. Historically, according to Wikipedia, NPEs have been "generally not considered patent trolls," and typically are "university research laboratories, development firms that offer their patented technologies to licensees in advance, and licensing agents that offer enforcement and negotiation services on behalf of patent owners." But that benign view of NPEs may change with the new report.

Patent Trolling: Why Bio & Pharmaceuticals Are at Risk raises concerns about several developments, including the "Association of University Technology Managers revisiting its policy against selling to NPEs," which could provide "an extensive pool of ammunition for NPEs to launch against current products," explains Feldman.

The authors examined the life science holdings of five major universities. "We skimmed the patent holdings for four of the of five university systems with the highest number of patents issued in fiscal year 2011," including the University of California and University of Texas systems, the Massachusetts Institute of Technology, and the California Institute of Technology. "We added as a wild-card the University of Southern Florida, the school among the top 10 in 2011 patent grants which had the lowest ratio of license revenues to research expenditures," Feldman said.

Life sciences trolling is "predictable, and in its infancy," Feldman acknowledges, but "the study identified dozens of patents that could be deployed against current bio and pharm industries, following the patterns that NPEs have used against other industries. These include patents on drug formulas, methods of treatments, research methods, dosage forms, and others."

>> Connecticut's E-Discovery: Congratulations to Cindy Courtney, who is now "the newly-minted e-discovery lawyer at the Connecticut Attorney General's office—a brand new position." Her new title: "Assistant Attorney General," she will provide e-disco support for the unit's lawyers, as well as establish best practices, and provide training and education. Courtney previously worked for D4 in Hartford for almost for almost four years and was senior counsel at Cigna in Bloomfield for almost 18 years.

Monica Bay is editor-in-chief of Law Technology News and a member of the California bar. Twitter: @LTNMonicaBay @lawtechnews.