Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 1 of 7 PageID 4522 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. Case No. 3:15-cv-1477-39-JRK APPLE INC., et al., Defendants. PLAINTIFF PARKERVISION, INC. S RESPONSE TO DEFENDANT QUALCOMM INC. S OBJECTIONS TO THE REPORT AND RECOMMENDATION DENYING QUALCOMM S MOTION TO TRANSFER TO THE SOUTHERN DISTRICT OF CALIFORNIA
Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 2 of 7 PageID 4523 Cases TABLE OF AUTHORITIES Page(s Folkes v. Haley, 64 F. Supp. 2d 1152 (M.D. Ala. 1999...3 Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-JRG, 2017 WL 5630023 (E.D. Tex. Nov. 22, 2017...2, 3 Welch Sci. Co. v. Human Eng g Inst., Inc., 416 F.2d 32 (7th Cir. 1969, cert. denied, 396 U.S. 1003 (1970...1 Wi-Lan Inc. v. Lenova (United States, Inc., No. 17cv365-BEN-MDD, 2017 WL 3194692 (S.D. Cal. July 27, 2017 (unpublished...1 ii
Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 3 of 7 PageID 4524 Plaintiff ParkerVision, Inc. ( ParkerVision respectfully submits this response to Defendant Qualcomm Incorporated s ( Qualcomm objection to the well-reasoned report and recommendation from Magistrate Judge Klindt. For the reasons explained below, none of Qualcomm s three objections to the Magistrate Judge s report have any merit, and the Court should therefore adopt the Magistrate Judge s Report and Recommendation. First, Qualcomm criticizes the Magistrate Judge s reliance on Welch Sci. Co. v. Human Eng g Inst., Inc., 416 F.2d 32, 35 (7th Cir. 1969, cert. denied, 396 U.S. 1003 (1970, for the principle that venue in a patent case is determined at the time a patent cause of action accrues, arguing that the Magistrate Judge resuscitat[ed] the case. Not so. Welch was and is good law, and is persuasive. For proof of this, one need look no further than a recent opinion from the very same judicial district to which Qualcomm seeks to transfer this case Wi-Lan Inc. v. Lenova (United States, Inc., No. 17cv365-BEN-MDD, 2017 WL 3194692 (S.D. Cal. July 27, 2017 (unpublished in which the court adopted the Welch rule. Additionally, Qualcomm ignores the Magistrate Judge s well-reasoned explanation for rejecting the rigid time of filing rule applied in Personal Audio the same rule for which Qualcomm now advocates. As the Magistrate Judge explained, if that rule were adopted, an infringer could avoid a patent suit in an undesirable district merely by quickly closing shop and relocating. See Report and Recommendation (Dkt. 88 at 19. That cannot be the law, and the patent venue statute does not compel such a rule. The Magistrate Judge s finding that a patent complaint is proper if filed a reasonable time after the closure of a regular and established place of business in a judicial district is an equitable solution consistent with the venue statute and good law, and one that should apply in this case. 1
Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 4 of 7 PageID 4525 Second, Qualcomm s complaint regarding the Magistrate Judge s finding with respect to Qualcomm s acts of infringement is a contrivance. It is well-settled law that an allegation of infringement even if contested is sufficient to establish venue. Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-JRG, 2017 WL 5630023, at *5 (E.D. Tex. Nov. 22, 2017. Qualcomm does not even attempt to address this black letter law. Instead, Qualcomm points to a conclusory, self-serving declaration from its in house counsel as support for its claim that no acts of infringement occurred in this district. See Report and Recommendation (Dkt. 88 at 20. After considering this declaration, the Magistrate Judge properly concluded that, in light of the allegations in ParkerVision s Amended Complaint and the low threshold for alleging infringement, ParkerVision met its burden of showing acts of infringement in this district by Qualcomm. Third, Qualcomm s objection to the Magistrate Judge s 1404(a analysis lacks merit. Qualcomm first lobs another accusation of forum shopping against ParkerVision, by arguing that ParkerVision s first choice of forum was the U.S. International Trade Commission ( ITC in Washington, D.C. But Qualcomm ignores the fact that this case was filed contemporaneously with the ITC case, and that Qualcomm not ParkerVision moved to stay this case to allow the ITC case to proceed first. Qualcomm also seems to fault ParkerVision for litigating the ITC case in Washington, D.C. But Washington, D.C. is the only place where the ITC is located; all ITC cases must be litigated there. In addition to Qualcomm s repeated ad hominem attacks against ParkerVision regarding the proper forum of this case, Qualcomm s claim that the Magistrate Judge failed to consider Qualcomm s alleged inconveniences in his 1404(a analysis is not true. The report expressly and thoroughly addresses and analyzes Qualcomm s position under each of the applicable 2
Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 5 of 7 PageID 4526 factors. See Report and Recommendation, at 20-28. The Magistrate Judge simply disagreed with Qualcomm s arguments and accurately found that Qualcomm s request to transfer would merely shift the inconvenience from Qualcomm to ParkerVision. Id. at 24 (internal quotations omitted. The Magistrate Judge was correct to recommend that this Court deny the motion under such facts. Folkes v. Haley, 64 F. Supp. 2d 1152, 1154 (M.D. Ala. 1999. For the foregoing reasons and the reasons set out in ParkerVision s Opposition to Qualcomm s Motion (Dkt. 65, the Court should adopt the Magistrate Judge s Report and Recommendation denying Qualcomm s Motion to Transfer to the Southern District of California. 3
Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 6 of 7 PageID 4527 February 6, 2018 SMITH HULSEY & BUSEY By /s/ John R. Thomas Stephen D. Busey Florida Bar Number 117790 John R. Thomas Florida Bar Number 77107 225 Water Street, Suite 1800 Jacksonville, Florida 32202 Tel: (904 359-7700 Facsimile: (904 359-7708 busey@smithhulsey.com jthomas@smithhulsey.com MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO PC Michael T. Renaud (Mass BBO No. 629783 James M. Wodarski (Mass BBO No. 627036 Michael J. McNamara (Mass BBO No. 665885 Daniel B. Weinger (Mass BBO No. 681770 Kristina R. Cary (Mass BBO No. 688759 One Financial Center Boston, MA 02111 Tel: (617 542-6000 Facsimile: (617 542-2241 MTRenaud@mintz.com JWodarski@mintz.com MMcNamara@mintz.com DBWeinger@mintz.com KRCary@mintz.com Attorneys for ParkerVision, Inc. 4
Case 3:15-cv-01477-BJD-JRK Document 94 Filed 02/06/18 Page 7 of 7 PageID 4528 CERTIFICATE OF SERVICE I certify that on February 6, 2018, I electronically filed the foregoing with the Clerk of Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non-cm/ecf participants: none. /s/ John R. Thomas Attorney 75265986v.3 5