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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CISCO SYSTEMS, INC. and SCIENTIFIC ATLANTA, INC., ARRIS GROUP, INC., and THOMSON, INC. Plaintiffs v. GPNE CORP. Defendant. § § § § § § § § §

C. A. No. 07-671 (SLR) Jury Trial Demanded PUBLIC VERSION

GPNE'S BRIEF IN SUPPORT OF ITS MOTION TO TRANSFER

Richard K. Herrmann (I.D. No. 405) MORRIS JAMES LLP 500 Delaware Avenue, Suite 1500 Wilmington, DE 19801-1494 (302) 888-6800 - Telephone [email protected]

OF COUNSEL: Edward W. Goldstein [email protected] Corby R. Vowell [email protected] GOLDSTEIN, FAUCETT & PREBEG, LLP 1177 West Loop South, Suite 400 Houston, Texas 77027 (713) 877-1515 ­ Telephone

Originally dated: January 18, 2008 Public version filed: January 24, 2008

ATTORNEYS FOR GPNE CORP.

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TABLE OF CONTENTS I. II. III INTRODUCTION STATEMENT OF FACTS ARGUMENT A. The Legal Standard
B. This Action Could Have Been Filed in the Eastern District of Texas

1 2 4 4 8 8 10 14

C. Given the Similar Issues in the Pending Texas GPRS Litigation, The Interests of Justice Favor Transfer. D. The Balance of Convenience Favors Transfer IV. CONCLUSION

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TABLE OF AUTHORITIES Cases

Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192 (D. Del. 1998) Chrysler Credit Corp. v. Country Chrysler, 928 F.2d 1509 Cognitronics Imaging Sys., Inc. v. Recognition Research, Inc., 83 F. Supp. 2d 689 (E.D. Va. 2000) ConnectTel LLC v. CISCO Systems, Inc., No. 2:04-CV-396, 2005 WL 366966 (E.D. Tex., Feb. 16,2005) Corixa Corp. v. IDEC Pharm. Corp., 2002 U.S. Dist. LEXIS 2980 (D. Del. Feb. 25,2002) E.E.o. C. v. University ofPennsylvania, 850 F.2d 969 (3rd. Cir. 1988) Genden v. Merrill Lynch Pierce, Fenner & Smith, Inc., 621 F. Supp. 780 (N.D. Ill. 1985) Holley Performance Products Inc. v. Barry Grant Inc., 74 U.S.P.Q. 2d 1357 (N.D. Ill. 2004) Houck v. Trans World Airlines, 947 F. Supp. 373 (N.D. Ill. 1996) Impra, Inc. v. Quinton Instruments Co., 17 U.S.P.Q. 2d 1890 (D. Ariz. 1990) In re Ralston Purina Co., 726F.2d 1002 (4thCir. 1986) Jumara v. State Farm Ins. Co., 55 F.3d 873 (3rd Cir. 1995) LG Elecs. Inc. v. Advance Creative Computer Corp., 131 F. Supp. 2d 804 (E.D. Va. 2001) Mymail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004), One Beacon Insurance Co. v. JNO Storage Trailer Corp., 312 F. Supp. 2d 824 (E.D. Va. 2004) Piper Aircraft Co. v. Reyno, 434 U.S. 235 (1981) Prudential Ins. Co. ofAmerica v. Rodano, 493 F. Supp. 954 (E.D. Pa. 1980) Regents of Univ. ofCal. V Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997)

10 5 5 12 6,8, 10 7, 10, 11 13 6, 7 12 5 12 10 6 9 12 5 5 7

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Reiffin v. Microsoft Corp., 104 F. Supp. 2d 48 (D.D.C. 2000) Reyno v. Piper Aircraft Co., 630 F.2d 149 (3rd Cir. 1980) Samsung Elecs. Co. v. Rambus Inc., 386 F. Supp. 2d 708 (E.D. Va. 2005) Sony Elecs., Inc. v. Orion IP, LLC, 2006 U.S. Dist. LEXIS 9834 (D. Del. Mar. 14,2006) Stewart Org. v. Ricoh Corp., 487 U.S. 22 (1988) Supco Auto. Parts v. Triangle Auto Spring Co., 538 F. Supp. 1187 (E.D. Pa. 1982) Van Dusen v. Barrack, 376 U.S. 612 (1964) Zoetics, Inc. v. Yahoo!, Inc., 2006 U.S. Dist. LEXIS 46910 (D. Del. July 6,2006) Other Authorities
28 U.S.C. § 1404(a) 28 U.S.C. §§ 1391 35 U.S.C. §§ 1 et seq Declaratory Judgment Act §§ 1331 and 1338(a)

5 10 9 6 5 5 5 10

1,4 8 8 8

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Defendant GPNE Corporation ("GPNE") moves the Court to Transfer this case pursuant to 28 U.S.C. § 1404(a) to the Eastern District of Texas, Marshall Division where GPNE is currently litigating U.S. Pat. No. 6,282,406, one of the patents-in-suit to this declaratory action, against Samsung Telecommunications America, L.P ("Samsung") and previously asserted the same patent against DOCSIS compliant modems.

I.

INTRODUCTION
This case concerns the infringement and validity of U.S. Pat. Nos. 6,282,406 ("the '2,406

patent"), 7,200,406 ("the '0,406 patent"), and 7,209,748 ("the '748 patent") (collectively referred to as the "patents-in-suit"). GPNE filed an infringement action concerning the same '2,406 patent against Samsung in the Eastern District of Texas on January 31, 2007. 1 In the interest of judicial economy and for the convenience of the parties and witnesses, GPNE hereby moves for a change of venue to that district. The action against Samsung has been actively litigated for almost a year. Judge Davis has been introduced to the patents and the invention embodied therein. GPNE and Samsung have exchanged claim terms to be construed by the court. GPNE has filed its infringement contentions and Samsung has filed its invalidity contentions. GPNE and Samsung have

conducted fact discovery and inventor depositions are currently scheduled in January and March. Judge Davis is familiar with the '2,406 patent from the action against Samsung and familiar with the DOCSIS technology from the previous DOCSIS litigation against Plaintiffs' customers which has been settled and dismissed? ("the Texas DOCSIS litigation") GPNE filed infringement contentions comparing the claims 1, 2, 4, 7, 9, 12, and 14 of the '2,406 patent to

I

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GPNE Corp. v. Samsung Telecommunications America, L.P., et al., C.A. 6:07-cv-59 GPNE Corp. v. Time Warner Cable, Inc., et al., 6:07-cv-60

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DOCSIS compliant cable modems and produced documents related to the '2,406 patent file history and conception. Furthermore, none of the parties have any connection with Delaware other than GPNE, Arris Group, Inc. ("Arris"), and Thomson, Inc. ("Thomson") being incorporated there. GPNE is not aware of any documents or witnesses located in Delaware. Rather, the vast majority of GPNE's documents related to the litigation are located in the offices of its counsel, in Houston, Texas. Moreover, Texas is much closer to Hawaii than Delaware. Texas is also centrally

located in relation to Plaintiffs' principal places of business in Georgia, California, and Indiana. Non-stop flights between Hawaii and Delaware are not currently offered by any airline, but both American Airlines and Continental Airlines offer non-stop flights from Hawaii to Houston and Dallas, respectfully.

II.

STATEMENT OF FACTS
On January 31, 2007, GPNE filed two patent infringement cases in the Eastern District of

Texas. GPNE filed a patent infringement action against Time Warner Inc. ("Time Warner"), Comcast Cable Communications LLC ("Comcast"), and Charter Communications, Inc. ("Charter") (collectively "the Texas DOCSIS Defendants"), alleging that the Texas DOCSIS Defendants' use of DOCSIS certified modems infringed the '2,406 patent in a case captioned

GPNE Corp. v. Time Warner Inc. et al. No. 6:07-cv-60. (Amended Complaint attached as
Exhibit A.) GPNE also filed a patent infringement action against Samsung, LG Electronics Mobilecomm U.S.A., Inc., and HTC America, Inc., alleging that mobile-phones operating under the GPRS standard infringe the '2,406 and '716 patents in a case captioned GPNE Corp. v.

Samsung Telecommunications America L.P, et al. No. 6:07-cv-59 ("the Texas GPRS litigation")
(Original Complaint attached as Exhibit B.)

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On June 13,2007, under the guise of Federal Rule of Evidence 408, GPNE met to discuss settlement with the Texas DOCSIS Defendants. (Ex. C, Declaration of Ernest Bodner in Support of Defendant's Motion For Transfer ,-r 6) ("Bodner Decl.")

Paragraphs 17 through 19 of Plaintiffs' complaint address the presence of an actual controversy and specifically allege that GPNE informed the Plaintiffs of their infringement. However, the only communication GPNE has had with Plaintiffs was during a settlement meeting which was covered by Rule 408. (Id.,-r 6.) After the settlement meeting, GPNE continued with the Texas DOCSIS litigation and submitted infringement contentions for the '2,406 patent and DOCSIS compliant cable modems. (Plaintiffs' Amended Complaint For Declaratory Judgment,-r 14) ("Am. Comp!.".) On November 5,2007 a Joint Stipulation to Dismiss was filed and subsequently entered by the court. (Bodner Decl.,-r 6.)
In the Texas GPRS litigation the parties have been litigating for nearly a year. (See id. ,-r

3.) The parties have agreed to a scheduling order and protective order. (Id.,-r 4.) They have submitted their terms and claim elements for construction. (Id.) Samsung has submitted their invalidity contentions. (Id.) The parties have a Markman hearing scheduled for August 7, 2008 and trial scheduled for March 9, 2009. (Id.) Plaintiffs will most likely argue that the '0,406 and '748 patents have not been asserted in the Texas GPRS litigation. However, both the '0,406 and '748 patents are continuations of the '2,406 patent, already asserted in the Texas GPRS litigation. Accordingly, Plaintiffs invalidity arguments will be similar if not identical to those made in the Texas GPRS litigation. Plaintiffs

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will most likely argue that the GPRS standard at issue in the Texas GPRS litigation is separate and distinct from the DOCSIS standard that Plaintiffs' modems comply with. However, both standards are based on data transmission networks and share many similarities. Thus, the

interests ofjustice will be served if this action is transferred to the Eastern District of Texas. Furthermore, GPNE does not have any connection to Delaware, other than the fact that they were incorporated there and were granted a motion to transfer a declaratory judgment action filed in the District of Delaware by Time Warner Cable to the Eastern District of Texas. (Bodner DecI. ,-r,-r 2, 8; Am. CompI. ,-r 5; Ex. D, Time Warner Cable, Inc. v. GPNE Corp., 1:07-cv-067, Memorandum Opinion.) Also, GPNE's documents related to this litigation are located in the offices of its counsel, in Houston Texas. (Bodner DecI. ,-r 7.) Texas is also centrally located in relation to Plaintiffs' principal places of business in Georgia, California, and Indiana. Non-stop flights between Hawaii and Delaware are not currently offered by any airline, but both American Airlines and Continental Airlines offer non-stop flights from Hawaii to Houston and Dallas, respectfully. (See Ex. E) For the reasons delineated below, this Court should transfer this action to the Judge Leonard Davis in the Eastern DistrIct of Texas, pursuant to 28 U.S.C. § 1404(a).

III.

ARGUMENT A. The Legal Standard Section 1404(a) of 28 U.S.C. provides that "for the convenience of the 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." 28 U.S.C. § 1404(a). "Congress enacted 28 U.S.c. § 1404(a) as a federal housekeeping measure allowing easy change of venue within a

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unified federal system." Chrysler Credit Corp. v. Country Chrysler, 928 F.2d 1509, 1515 (lOth Cir. 1991) (internal quotation omitted). The purpose of section 1404(a) is to "prevent the waste 'of time, energy, and money' and 'to protect litigants, witnesses and the public against unnecessary inconvenience and expense.'" Van Dusen v. Barrack, 376 U.S. 612, 616 (l964) (citation omitted). As the Supreme Court explained in Van Dusen, "Section 1404(a) reflects an increased desire to have federal civil suits tried in the federal system at the place called for in the particular case by considerations of convenience and justice," regardless of where the action was originally brought. Id. at 616. While it revised and codified the cornmon law doctrine of forum non conveniens, section 1404(a) is broader and grants district courts more discretion to transfer cases. Cognitronics

Imaging Sys., Inc. v. Recognition Research, Inc., 83 F. Supp. 2d 689,696 (E.D. Va. 2000) (citing Piper Aircraft Co. v. Reyno, 434 U.S. 235,253 (1981)). A district court has discretion to transfer
based upon "individualized case by case consideration of convenience and fairness." Stewart

Org. v. Ricoh Corp., 487 U.S. 22, 27 (1988).
It is well-established that a related case pending in a proposed transferee district is a

"powerful reason to grant a motion for a change of venue." Supco Auto. Parts v. Triangle Auto

Spring Co., 538 F. Supp. 1187, 1192 (B.D. Pa. 1982) (citing Prudential Ins. Co. ofAmerica v. Rodano, 493 F. Supp. 954, 955 (E.D. Pa. 1980) (transfer is appropriate where a similar case is
pending in another jurisdiction).) "As a general rule, cases should be transferred to districts where related actions are pending." Impra, Inc. v. Quinton Instruments Co., 17 U.S.P.Q. 2d 1890, 1892 (D. Ariz. 1990). Also, the court in Reiffin v. Microsoft Corp., 104 F. Supp. 2d 48, 56 (D.D.C. 2000) stated: "Piecemeal litigation in the complex and technical area of patent and

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trademark law is especially undesirable. Rather, all of the parties' related patent and trademark infringement claims should be decided in the same court." "Where two patent lawsuits involving the same claims are filed in different jurisdictions, the Federal Circuit requires that the first-filed action be given preference absent special circumstances." Sony Elecs., Inc. v. Orion IP, LLC, 2006 U.S. Dist. LEXIS 9834, at *2 (D. Del. Mar. 14,2006) (quoting Corixa Corp. v. IDEC Pharm. Corp., 2002 U.S. Dist. LEXIS 2980, at *304 (D. Del. Feb. 25, 2002)). In LG Elecs. Inc. v. Advance Creative Computer Corp., 131 F. Supp. 2d 804 (E.D. Va. 2001), the court granted a transfer from the Eastern District of Virginia to Northern District of California stating: In this case the Northern District of California is already familiar with the applicable law. This case is very similar to those already in the Northern District of California. Where a party has previously litigated claims involving certain issues in one forum, as LGE has here, 'a court in that district will likely be familiar with the facts of the case. As a matter of judicial economy, such familiarity is highly desirable. Thus this factor supports transferring the case. [citations omitted.] Undoubtedly, the Northern District of California has already invested substantial time and energy in this case; therefore, transfer would promote judicial economy. Id. at 815. In Holley Performance Products Inc. v. Barry Grant Inc., 74 U.S.P.Q. 2d 1357 (N.D. Ill. 2004), the court considered the waste and risk of having the same patent considered by two different courts: "The court should not countenance the simultaneous litigation of essentially identical claims in two federal courts." Applexion, 1995 U.S. Dist. LEXIS 4957 at *13. Holley argues, without support, that the court should retain jurisdiction because it is unlikely the Georgia court has as much experience with patent law as this court. Both districts are equally capable of resolving federal patent litigation. Holley also argues transfer or declining to exercise jurisdiction will cause delay, and Holley submits evidence that the median time of case disposition in the Northern District of Illinois is 5.3 moths, while the median time in the Northern

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District of Georgia is 8.8 months. While this court has set a discovery schedule, a review of the Georgia docket shows that both cases have made comparable progress. In the Georgia case, Holley has moved to dismiss and transfer venue, just as Grant has done here. This is precisely the type of duplicative litigation that warrants transfer to ensure efficient functioning of federal courts. It will be a significant waste of judicial economies for two separate courts to adjudicate issues regarding the same patent. There is a great risk that consideration of the same patent by two separate federal courts will create inconsistent results, particularly with regard to claim construction rulings.

Id. at 1363, emphasis added.
Additionally, the Federal Circuit in Regents of Univ. of Cal. V. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed. Cir. 1997) held: "[I]n a case such as this in which several highly technical factual issues are presented and the other relevant factors are in equipoise, the interest ofjudicial economy may favor transfer to a court that has become familiar with the issues. Accordingly, the court did not abuse its discretion by transferring the case after affording determinative weight to the consideration ofjudicial economy." Here, the first filed case is the Texas GPRS litigation involving the same '2,406 patent asserted in this action. Historically, the Third Circuit has applied the first-to-fi1e rule for cases involving the same issues. See E.E.o.C. v. University ofPennsylvania, 850 F.2d 969, 971 (3rd. Cir. 1988). In E.E. 0. c., the court held that "in all cases of federal concurrent jurisdiction, the court which first has possession of the subject must decide it." Id. (citations omitted) (emphasis added). Furthermore, the District of Delaware, in Time Warner Cable, Inc. v. USA Video

Technology Corp., interpreted the first-to-file rule as applying to "litigation that involves the same subject matter, not necessarily the same parties." 2007 WL 3196301 (D.De1., Oct. 31, 2007) (quoting E.E.o.C. v. University ofPennsylvania, 850 F.2d 969, 971 (3 rd Circuit, June 23, 2988, ("the court which first has possession of the subject must decide it.")). The first-to-file rule "serves to prevent a multiplicity of actions and to achieve resolution in a single lawsuit of all

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disputes from common matters." Corixa Corp. v. IDEC Pharm. Corp., 2002 U.S. Dist. LEXIS 2980, at *4 (D. Del. Feb. 25, 2002) (litigating two separate trials in mirror image defeats the first-to-file rule where cases involve same patent) (emphasis added). Since the two cases both involve the similar facts and the same patent, trying the matter in two different courts would defeat the reasoning behind the first-to-file rule. Therefore,

because the Eastern District of Texas initially had jurisdiction over the subject of this matter, GPNE's choice of forum should be shown deference and this case should be transferred to the Eastern District of Texas.
B. This Action Could Have Been Filed in the Eastern District of Texas

Plaintiffs assert jurisdiction under the patent laws of the United States, 35 U.S.C. §§ 1 et seq. and the Declaratory Judgment Act §§1331 and 1338(a). They assert venue in this district under 28 U.S.C. §§ 1391. By filing the Texas DOCSIS and GPRS litigations GPNE has availed itself of venue in the Eastern District of Texas. Accordingly, this action could have been filed in the Eastern District of Texas.
C. Given The Similar Issues In The Pending Texas GPRS Litigation, The Interests Of Justice Favor Transfer

The most prevalent reason for granting GPNE's motion to transfer is judicial economy. Here, Judge Davis in the Eastern District of Texas has already been introduced to the DOCSIS standard and received infringement contentions for the '2,406 patent and DOCSIS compliant modems through the Texas DOCSIS litigation. (Bodner Decl.
~

5.) Also, the parties have filed

their infringement contentions and invalidity contentions in the Texas GPRS litigation and Judge Davis has set the trial schedule and entered a protective order. (Id. at ~ 4.) Accordingly, Judge Davis has expended judicial resources on the same and similar issues to the present action and

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transferring this action to the Eastern District of Texas promotes judicial efficiency and consistent rulings. Further, in Mymail, Ltd. v. Am. Online, Inc., 223 F.R.D. 455, 458 (E.D. Tex. 2004), the Eastern District of Texas stated: "The prospect of inconsistent claim construction favors resolving related patent cases in the same forum when possible. [citation omitted.] Besides being a duplicative use of scarce judicial resources, two claim constructions risk inconsistency, create greater uncertainty regarding the patent's scope, and impede the administration of justice." Courts also consider the interest of justice to "weigh heavily" in favor of transfer when related actions are pending in the transferee forum because it results in "efficient, economical and expeditious pre-trial proceedings and discovery," and prevents "duplicative litigation and inconsistent results." Samsung Elecs. Co. v. Rambus Inc., 386 F. Supp. 2d 708, 721 (B.D. Va. 2005). The court in Samsung Elecs. Co. held that "transfer and consolidation will serve the interest of judicial economy in most cases where the related actions raise similar or identical issues of fact and law." Id. The "interest of justice" would be ill-served if the patent infringement allegations concerning the same patent were determined by different courts. The court in the Eastern

District of Texas will become intimately familiar with the patent and the underlying technology and will be required to determine the scope and validity of the patent claims. It would be extremely wasteful, and potentially produce conflicting results for another court to consider the same or substantially similar issues to those that have been or presently are being determined by a sister court.

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D. The Balance of Convenience Favors Transfer

Generally, courts balance well-established private and public interests to detennine whether transfer is warranted. Zoetics, Inc. v. Yahoo!, Inc., 2006 U.S. Dist. LEXIS 46910, at *7 (D. Del. July 6, 2006) (citing Reyno v. Piper Aircraft Co., 630 F.2d 149, 159 (3rd Cir. 1980)). Private interests include the plaintiffs choice of forum, the defendant's preferred forum, whether the claim arose elsewhere, the convenience of the witnesses, but only so far as the witnesses might be unavailable for trial if the trial is conducted in a certain forum, and the location of books and records, to the extent that these books and records could not be produced in a certain forum. Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3rd Cir. 1995). The public interests include the enforceability of the judgment, practical considerations regarding the ease, speed, or expense of the trial, the administrative difficulty due to court congestion, the local interest in deciding local controversies in the home forum, the public policies of the two fora, and the trial judge's familiarity with the applicable state law in diversity cases. Zoetics, 2006 U.S. Dist. LEXIS 46910, at *8. As discussed above, GPNE filed the Texas GPRS litigation before the Plaintiffs filed this action. Accordingly, the first-to-file rule gives deference to GPNE's choice of forum. A

plaintiffs choice of forum should be upheld unless rare or extraordinary circumstances exist that would mandate dismissal or transfer. See E.E.OC., 850 F.2d at 976. While the District of Delaware is an appropriate jurisdiction, the mere fact that some of the parties to this action are incorporated in Delaware, "alone will not tip the 'balance of convenience' in its favor. Corixa Corp., 2002 U.S. Dist. LEXIS 2980, at *12 (quoting Affimetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192,207 (D. Del. 1998)).

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Furthennore, even if the Court considers this the first-filed action, Plaintiffs' decision to file a Declaratory Judgment action against GPNE is blatant forum shopping. Plaintiffs admit they were aware of the recent dismissal of the Texas DOCSIS litigation in their complaint: "GPNE has filed, and, on infonnation and belief, recently agreed to dismiss an action alleging that each of TWC, Comcast and Charter infringe the '2,406 Patent by inter alia, using and selling DOCSIS certified cable modems." (Am. CompI.
~14.)

A plaintiffs choice of forum should be

upheld unless there are rare or extraordinary circumstances that mandate dismissal or transfer.

See E.E.D.C., 850 F.2d at 976. Thus, if the Court detennines that this is the first-filed action,
Plaintiffs' forum shopping is a proper basis for departing from the first-to-file rule. ld.

Consequently, this action should be transferred to the Eastern District of Texas because Plaintiffs' choice of forum should be given no deference and the other factors of convenience weigh in favor of transfer. Moreover, Section 1404(a) particularly speaks in tenns of the "convenience of the parties and the witnesses." The location of the court is initially only relevant to those witnesses who appear in person at trial. The location for depositions will occur at mutually agreed locations that are convenient to the witnesses. Most witnesses will likely testify at trial by videotape. Except for witnesses called to testify in person, transfer makes no difference whatsoever. The location of the parties favors transfer. GPNE has its principal place of business in Honolulu, Hawaii. (Bodner DecI. place of business in Delaware.
~

2.) None of the Plaintiffs to this action have a principal
~~

(See Am. CompI.

1-4.)

Rather, Cisco is a California
~

corporation with its principal place of business in California. (Am. CompI.

1.) Scientific is a
~

Georgia corporation with its principal place of business in Georgia. (Am. CompI. Delaware corporation with its principal place of business in Georgia.

2.) Arris is a
~

(Am. CompI.

3.)

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Thomson is a Delaware corporation with its principal place of business in Indiana. (Am. CompI.

,-r 4.) Central to all parties' principal place of business is Texas. All of the Plaintiff companies
are major corporations doing business nationally. Without discovery, it is impossible to know the location of Plaintiffs' trial witnesses. However, given the nature of the Plaintiffs' business and infringing activity, Plaintiffs would be hard pressed to claim that a transfer of this action would represent a hardship. Moreover, devices that are compliant with the DOCSIS standard necessarily contain certain standard features. Thus, it is highly likely that Plaintiffs' engineers would not be needed as trial witnesses. Also, since patent validity is a matter of expert witnesses interpreting publications, Plaintiffs' employees would not be necessary witnesses concerning validity. Indeed, it is likely that the principal witnesses will be experts, not party employees. The convenience of paid, expert witnesses is entitled to little or no weight. See, e.g., In re Ralston

Purina Co., 726 F.2d 1002, 1006, n. 6 (4th Cir. 1986) ("[t]he convenience of plaintiffs paid
expert witnesses is of little moment."); Houck v. Trans World Airlines, 947 F. Supp. 373, 376, n.5 (N.D. Ill. 1996) ("[t]he location of expert witnesses is not relevant."); One Beacon Insurance

Co. v. JNO Storage Trailer Corp., 312 F. Supp. 2d 824, 831 (E.D. Va. 2004) ("[i]t is less
inconvenient for an expert to travel in order to testify, because an expert is well compensated...."). See also ConnectTel LLC v. CISCO Systems, Inc., No. 2:04-CV-396, slip. Op. at *3, 2005 WL 366966 (E.D. Tex., Feb. 16, 2005) (Hon. Leonard Davis) ("[g]iven that patent cases like this involve battles of documents and technical experts scattered across the nation, this factor is immaterial and does not favor transfer."). Moreover, there are no known documents located in Delaware. Also, location of counsel is irrelevant as Section 1404 ·speaks in terms of the "convenience of the parties and witnesses.

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See Genden v. Merrill Lynch Pierce, Fenner & Smith, Inc., 621 F. Supp. 780, 782 (N.D. Ill.

1985) (noting that "the convenience of counsel is not a factor"). Consequently, the location of the parties and witnesses favors transfer to the Eastern District of Texas because it is a central location for all the parties. The administrative difficulty due to court congestion also weighs in favor of transfer to the Eastern District of Texas. Specifically, in 2006 the median time from filing to disposition in a civil case in the District of Delaware was 16.8 months, compared to 9 months in the Eastern District of Texas. (Ex. F, G). Consequently, the court congestion in the District of Delaware weighs in favor of transfer to the Eastern District of Texas. The remaining factors are neutral. Both the Eastern District of Texas and the District of Delaware are familiar with the patent laws and have adopted patent rules. A judgment would be enforceable against the parties regardless of transfer. The local interest in deciding local

controversies is neutral because the DOCSIS certified modems are sold and used in both districts.

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IV.

CONCLUSION
It makes judicial and economic sense for a patent case to be transferred to a court that has

been introduced to the patents and underlying technology, that has already scheduled a Markman hearing to construe the scope of the patents, and that will consider infringement and validity arguments that are likely to be the same or at least substantially overlap with those in the current action. Not only would transfer serve the interests ofjudicial economy, but it would also prevent the possibility of inconsistent rulings. For the reasons outlined above, this Court should transfer this action to the Eastern District of Texas.

Richard K. errmann Morris James, LLP 500 Delaware Avenue, Suite 1500 Wilmington, DE 19801-1494 T: (302) 888-6800 [email protected]

OF COUNSEL: Edward W. Goldstein [email protected] Corby R. Vowell [email protected] Goldstein, Faucett & Prebeg, LLP 1177 West Loop South, Suite 400 Houston, Texas 77027 (713) 877-1515 - Telephone (713) 877-1737 Facsimile

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EXHIBIT A

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IN THE UNITED STATES DISTRlCT COURT FOR THE EASTERN DISTRlCT OF TEXAS MARSHALL DIVISION GPNE CORP., Plaintiff
~

TIME WARNER CABLE, INC.; COMCAST CABLE COMMUNICATIONS, LLC; CHARTER COMMUNICATIONS, INC. Defendants

§ § § § § § § § § § § § § § § § §

Case No: No. 6:07-cv-60

JURY TRIAL DEMANDED

PLAINTIFF'S FIRST AMENDED COMPLAINT
Plaintiff, GPNE Corp. ("Plaintiff'), files this Original Complaint against Defendants, Time Warner Cable, Inc. ("Time Warner"), Comcast Cable Communications, L.L.C. ("Comcast"), and Charter Communications, Inc. ("Charter"), and alleges as follows:

THE PARTIES
1. Plaintiff is a Delaware corporation with its principal place ofbusiness at 2556 Lemon Road, BIOI Honolulu, Hawaii 96815. 2. Time Warner, on information and belief, is a corporation organized under the laws of the State ofDelaware. Time Warner is doing business in Texas, and, on information and belief, has a principal place of business at 290 Harbor Drive; Stamford, CT 06902. Time Warner

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may be served with process by serving its registered agent, the CT Corporation System, 350 North St. Paul St., Dallas, TX 75201. 3. Corncast, on information and belief, is a corporation organized under the laws ofthe State of Delaware. Comcast is doing business in Texas, and, on information and belief, has a principal place of business at 1500 Market Street, Philadelphia, PA 19102-2148. Comcast may be served with process by serving its registered agent, Comcast Capital Corporation at 1201 Market Street, Suite 1000, Wilmington, DE 19801. 4. Charter, on information and belief, is a corporation organized under the laws of the State of Delaware. Charter is doing business in Texas, and, on information and belief, has a principal place ofbusiness at 12405 Powerscourt Drive, St. Louis, MO 63131. Charter may be served with process by serving its registered agent, Corporation Service Company DBA CSCLawyers Incorporating Service Company, 701 Brazos, Suite 1050, Austin, TX 78701.
JURISDICTION & VENUE

5.

This is an action for infringement ofa United States patent. Accordingly, this action arises under the patent laws ofthe United States ofAmerica, 35 U.S.C. § 1 et. seq. and jurisdiction is properly based on Title 35 United States Code, particularly § 271, and title 28 United States Code, particularly § 1338(a).

6.

Time Warner, upon information and belief, transacts business in this judicial district by manufacturing, using, selling, or offering to sell products as described and claimed in United States Patent No. 6,282,406, the patent at issue in this lawsuit, and/or by conducting other business in this judicial district.

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7.

Comcast, upon infonnation and belief, transacts business in this judicial district by manufacturing, using, selling, or offering to sell products as described and claimed in United States Patent No. 6,282,406, the patent at issue in this lawsuit, and/or by conducting other business in this judicial district.

8.

Charter, upon infonnation and belief, transacts business in this judicial district by manufacturing, using, selling, or offering to sell products as described and claimed in United States Patent No. 6,282,406, the patent at issue in this lawsuit, and/or by conducting other business in this judicial district.

9.

Venue is proper in this court under Title 28 United States Code § 1391(b) and l400(b).

PATENT INFRINGEMENT COUNT
lO. On August 28,2001, United States Patent No. 6,282,406 ("the'406 patent") entitled "Paging Method and Apparatus" was duly and legally issued. A true and correct copy of the '406 patent is attached as Exhibit A. 11. 12. 13. Pursuant to 35 U.S.C. § 282, the above-listed United States Patent is presumed valid. Plaintiff, GPNE Corp., is the owner of the '406 patent. Time Warner, on infonnation and belief, manufactures, uses, and sells products that infringe at least Claim 1 ofthe '406 patent, including for example and without limitation all DOCSIS certified cable modems, as well as any other cable modems or other devices acting or capable of acting in the manner described and claimed in the '406 patent. 14. Comcast, on infonnation and belief, manufactures, uses, and sells products that infringe at least Claim 1 of the '406 patent, including for example and without limitation all DOCSIS

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certified cable modems, as well as any other cable modems or other devices acting or capable of acting in the manner described and claimed in the '406 patent. 15. Charter, on information and belief, manufactures, uses, and sells products that infringe at least Claim 1 of the '406 patent, including for example and without limitation all DOCSIS certified cable modems, as well as any other cable modems or other devices acting or capable of acting in the manner described and claimed in the '406 patent. 16. The infringement of the '406 patent alleged above has injured the Plaintiff and thus, it is entitled to recover damages adequate to compensate for Time Warner, Comcast, and Charter's infringement, which in no event can be less than a reasonable royalty.

DEMAND FOR JURY TRIAL
17. Plaintiff hereby demands a jury trial on all claims and issues.

PRAYER FOR RELIEF
Wherefore, Plaintiff prays for entry of judgment: A. that Defendants, Time Warner, Comcast, and Charter, have infringed one or more

claims of the '406 patent; B. that Defendants, Time Warner, Comcast, and Charter, account for and pay to Plaintiff

all damages caused by the infringement of the '406 patent, which by statute can be no less than a reasonable royalty; C. that Plaintiff be granted pre-judgment and post-judgment interest on the damages

caused to them by reason ofDefendants, Time Warner, Comcast, and Charter's infringement ofthe '406 patent; D. that Plaintiff be granted its attorneys' fees in this action;

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E. F.

that costs be awarded to Plaintiff; that Plaintiffbe granted such other and further relief as the Court may deem just and

proper under the current circumstances.

Respectfully submitted,

Date: February 26,2007

lsi Edward W. Goldstein
Edward W. Goldstein Texas Bar No. 08099500 [email protected] Christopher M. Faucett Texas Bar No. 00795198 [email protected] Matt Prebeg Texas Bar No. 00791465 [email protected] Corby R. Vowell Texas BarNo. 24031621 [email protected] GOLDSTEIN, FAUCETT, & PREBEG L.L.P 1177 West Loop South, Suite 400 Houston, TX 77027 Telephone: (713) 877-1515 Facsimile: (713) 877-1737
T. John Ward, Jr. Texas BarNo. 00794818 Law Office ofT. John Ward, Jr., P.C. 111 W. Tyler Street Longview, Texas 75601 Telephone: (903) 757-6400 Facsimile: (903) 757-2323 Email: [email protected] ATTORNEYS FOR PLAINTIFF

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CMIECF system per Local Rule CV-5(a)(3) on February 26,2007. Any other counsel of record will be served by first class U.S. mail.

lsi Edward W. Goldstein
Edward W. Goldstein

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION OPNE CORP., Plaintiff
Y.

§ § § §

§
§ § § § § § § § § § § §

Case No: 6:07cy 59

SAMSUNO TELECOMMUNICAnONS AMERICA, L.P.; LO ELECTRONICS MOBILECOMM U.S.A, we.; HTC AMERICA, INC. Defendants

JURy TRIAL DEMANDED

PLAINTIFF'S ORIGlNAL COMPLAINT
Plaintiff, OPNE, Corp. ("Plaintiff'), files this Original Complaint against Defendants, Samsung Telecommunications America, L.P. ("Samsung"), LO Electronics MobileComm U.S.A., Inc. ("LO"), and HTC America, Inc., ("HTC"), and alleges as follows:

THE PARTIES
1. Plaintiffis a Delaware corporation with its principal place of business at2556 Lemon Road, BIOI Honolulu, Hawaii 96815. 2. Samsung, on information and belief, is a corporation organized under the laws ofthe State of Delaware. Samsung is doing business in Texas, and, on information and belief, has a principal place ofbusiness at 1130 E. Arapaho Road, Richardson, TX 75081. Samsung may

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be served with process by serving its registered agent, Jeong Han Kimat 1130 Arapaho Road, Richardson, TX 75081. 3. LG, on information and belief, is a corporation organized under the laws oftlle State of California. LG is doing business in Texas, and, on information and belief, has a principal place of business at 9820 Willow Creek Road, San Diego, CA 92131. LG may be served with process by serving its registered agent, CT Corporation System, 350 N. S1. Paul Street, Dallas, TX 75201. 4. HTC, on information and belief, is a corporation organized under the laws of the State of Texas. HTC is doing business in Texas, and, on info11l1ation and belief, has a principal place of business at 5950 Corporate Drive, Houston, TX 77036-2306. HTC may be served with process by serving its registered agent, Law Office of Christina C. Hsu, 15224 Interlachen Drive, Austin, TX 78717.

JURISDICTION & VENUE
5. This is an action for infringement ofa United States patent. Accordingly, this action arises under the patent Jaws ofthe United States ofAmerica, 35 U.S.C. § 1 et. seq. andjurisdiction is properly based on Title 35 United States Code, particularly § 271, and title 28 United States Code, particularly § 1338(a). 6. Samsung, upon information and belief, transacts business in this judicial district by manufacturing, using, selling, or offering to sell products as described and claimed in United States Patent No. 6,282,406 and United States Patent No. 7,031,716, the patents at issue in this lawsuit, and/or by conducting other business in this judicial district.

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7.

LG, upon information and belief, transacts business in this judicial district by manufacturing, using, selling, or offering to sell products as described and claimed in United States Patent No. 6,282,406 and United States Patent No. 7,031,716, the patents at issue in this lawsuit, and/or by conducting other business in this judicial district.

8.

HTC, upon information and belief, transacts business in this judicial distTict by manufacturing, using, selling, or offering to sell products as described and claimed in United States Patent No. 6,282,406 and United States Patent No. 7,03],716, the patents at issue in this lawsuit, and/or by conducting other business in this judicial district.

9.

Venue is proper in this court under Title 28 United States Code § ]391 (b) and 1400(b). PATENT INFRINGEMENT COUNT I

10.

On August 28,2001, United States Patent No. 6,282,406 ("the '406 patent") entitled "Paging Method and Apparatus" was duly and legally issued. A true and correct copy ofthe '406 patent is attached as Exhibit A.

11. 12. 13.

Pursuant to 35 U.S.C. § 282, the above-listed United States Patent is presumed valid. Plaintiff, GPNE Corp., is the owner ofthe '406 patent. Samsung, on information and belief, manufactures, uses, and sells products that infringe at least Claim 1 ofthe '406 patent, including for example and without limitation Samsung's Blackjack, Trace, t509s, t619, SGH-c207, SGH-e22S, SGH-d307, SGH-d357, SGH-d407, SGH-d415, SGH-d700, SGH-d807, SOH-el05, SGH-e315, SGH-e317, SGH-e715, SGHp207, SGH-p705, SGH-p735, SGH-p777, SGH-q105, SGH-sID5, SGH-s307, SGH-v205, SGH-v206, SGH-xl OS, SGH-x427, SGH-x427m, SGH-x475, SGH-x495, SGH-x497, SGHz40D, SGH-zxIO, and SGH-zx2D cellular telephones, as weI Ias any other cellular telephones

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or devices acting or capable ofacting under the GPRS standard or in the manner described and claimed in the' 406 patent. 14. LG, on information and belief, manufachlres, uses, and sells products that infringe at least Claim 1 of the '406 patent, including for example and without limitation LG's A7110, A77lO, Cl300, C1300i, C1500, C2000, CG225, CG300, CU320, CU400, CUSOO, F7200, F9100, F9200, G4011, 04015, 04050, LI150, Ll200, L1400, and L1400i cellular telephones, as well as any other cellular telephones or devices acting or capable of acting under the OPRS standard or in the manner described and claimed in the '406 patent. 15. HTC, on information and belief, manufactures, uses, and sells products that infringe at least Claim 1 of the '406 patent, including for example and without limitation HTC's Wallaby, Himalaya, Blue Angel, Magician, Magician Refresh, Alpine (Mont Blanc), Charmer, Prophet, Universal, Wizard (Prodigy), Hermes, TyTN, Artemis, P3300, Trinity, P3600, Muse (Melody), Herald, P4350, Foreseer DVB-H TV, Monet (Trilogy) DVB-H TV, Canary, Tanager, Voyager, Typhoon, Typhoon Feeler, Typhoon Sonata, Typhoon Amadeus, Hurricane, Tornado (Riemma, Farada, Tempo), Blizzard, Star Trek, Breeze, Excalibur, Oxygen, and Vera cellular platforms, as well as the Cingular 2125, Cingular 3125, Cingular 8125, Cingular 8525, Qtek 1010, Qtek 2020, Qtek 9090, Qtek SI00, Qtek S11 0, Qtek 2020i, Qtek S200, Qtek 9000, Qtek9100, Qtelc 9600, Qtek 6080, Qtek 7070, Qtek 8060, Qtek 8080, Qtek 8010, Qtek 8020, Qtek 8100, Qtek 8200, Qtek 8300, Qtelc 8310, Qtek 8500, Qtek 8600, Dopod 686, Dopod 696, Dopod 700, Dopod 818, Dopod 828, Dopod 696i, Dopod 818 Pro, Dopod 900, Dopod 838, Dopod P800W, Dopod D81O, Dopod C800, Dopod 515, Dopod 535, Dopod 565, Dopod 575, Dopod 585, Dopod 566, Dopod 586, Dopod 586W, Dopod

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577W, Dopod s300, Dopod cnow, Dopod 310, i-Mate PocketPC, i-Mate PDA2K, i-Mate Jam,02 XDA,02 XDA, 02 XDA II, 02 XDA lIs, O2 XDA II Mini, O2 XD IIi,02 XDA Neo,02 XDA Exec,02 XDA Mini S,02 XDA Trion,02 XDA Orbit, Orange SPY MlOOO, Orange SPY M2000, Orange SPY M500, Orange SPY M2500, Orange SPY M600, Orange SPY M5000, Orange SPY M30000, Orange SPY M31 00, Orange SPY, Orange SPY E I 00, Orange SPY E200, Orange Spy C500, Orange Spy C550, Orange SPY C600, Orange SPY C700, Orange SPV C1 00, i-Mate Jam Black, i-Mate PDA2, i-Mate Jamin, i-Mate JasJar, iMate K-JAM, i-Mate JasJam, i-Mate Smartphone, i-Mate SP2, i-Mate SP3, i-Mate SP3i, iMate SP4m, i-Mate SP5, i-Mate SP5m, i-Mate Smartflip, T-Mobile MDA, T-Mobile MDA II, T-Mobile MDA Ill, T-Mobile MDA Compact, T-Mobile MDA Compact II, T-Mobile MDACompactIII, T-Mobile MDA Pro, T-MobileMDA Vario, T-MobileMDA Varia IT, TMobile SDA, T-Mobile SDA II, T-Mobile SDA music, T-Mobile SDA music II, and TMobile Dash cellular telephones based on the above listed HTC platforms, as well as any other cellular telephones or devices acting or capable ofacting under the GPRS standard or in the manner described and claimed in the '406 patent. 16. The infringement of the'406 patent aIleged above has injured the Plaintiff and thus, it is entitled to recover damages adequate to compensate for Samsung, LG, and HTe's infringement, which in no event can be less than a reasonable royalty. PATENT INFRINGEMENT COUNT II 17. On April 18, 2006, United States Patent No. 7,031,716 ("the '716 patent") entitled ''Network Communication System Using Assigned Timeslots For Nodes to Request A Bandwidth

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Amount For Data Transmission With A Resulting Grant For The Node To Transmit" was duly and legally issued. A true and correct copy ofthe '716 patent is attached as Exhi bit B. 18. 19. 20. Pursuant to 35 U.S.C. § 282, the above-listed United States Patent is presumed valid. Plaintiff, GPNE Corp., is the owner ofthe '716 patent. Samsung, on information and belief, manufactures, uses, and sells products that infringe at least Claim 34 ofthe '716 patent, including for example and without limitation Samsung's Blackjack, Trace, t5098, t619, SGH-c207, SGH-c225, SGH-d307, SGH-d357, SGH-d407, SGH-d415, SGH-d700, SGH-d807, SGH-el05, SGH-e315, SGH-e317, SGH-e715, SGI-Ip207, SGH-p705, SGH-p735, SGH-p777, SGH-qI05, SGH-sI05, SGH-s307, SGH-v205, SGH-v206, SGH-xl05, SGH-x427, SGH-x427m, SGH-x475, SGH-x495, SGH-x497, SGHz400, SGH-zxl 0, and SGH-zx20 celIulartelephones, as well as any other cellular telephones or devices acting or capable ofacting under the GPRS standard or in the manner described and claimed in the '716 patent. 21. LG, on information and belief, manufactures, uses, and sells products that infringe at least Claim 34 of the '716 patent, including for example and without limitation LG's A 7110, A771D, C13DO, C130Di, C1500, C2DOO, CG225, CG3DO, CU320, CU400, CU500, F7200, F9100, F9200, G4011, G4015, G4050, L1150, L1200, 11400, and 11400i cellular telephones, as well as any other cellular telephones or devices acting or capable of acting under the GPRS standard or in the manner described and claimed in the '716 patent. 22. HTC, on information and belief, manufactures, uses, and sells products that infringe at least Claim 34 ofthe '716 patent, including for example and without limitation HTC's Wallaby, Himalaya, Blue Angel, Magician, Magician Refresh, Alpine (Mont Blanc), Charmer,

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Prophet, Universal, Wizard (prodigy), Hermes, TyTN, Artemis, P3300, Trinity, P3600, Muse (Melody), Herald, P4350, Foreseer DVB-H TV, Monet (Trilogy) DVB-H TV, Canary, Tanager, Voyager, Typhoon, Typhoon Feeler, Typhoon Sonata, Typhoon Amadeus, Hurricane, Tornado (Riemma, Farada, Tempo), Blizzard, Star Trek, Breeze, ExcaIibur, Oxygen, and Vera cellular platforms, as well as the Cingular2125, CingulaI' 3125, Cingular 8125, CingulaI' 8525, Qtek 1010, Qtek 2020, Qtek 9090, Qtek S100, Qtek S110, Qtek 2020i, Qtek S200, Qtek 9000, Qtek 9100, Qtek 9600, Qtek 6080, Qtek 7070, Qtek 8060, Qtek 8080, Qtek 8010, Qtek 8020, Qtek 8100, Qtek 8200, Qtek 8300, Qtek 8310, Qtek 8500, Qtek 8600, Dopod 686, Dopod 696, Dopod 700, Dopod 818, Dopod 828, Dopod 696i, Dopod 818 Pro, Dopod 900, Dopod 838, Dopod P800W, Dopod 0810, Dopod C800, Dopod 515, Dopod 535, Dopod 565, Doped 575, Doped 585, Doped 566, Dopod 586, Dopod 586W, Dopod 577W, Dopod s300, Dopod cnow, Depod 310, i-Mate PocketPC, i-Mate PDA2K, i-Mate Jam,02 XDA,02 XDA, O2 XDA II, O2 XDA Ils, O2 XDA II Mini, O 2 XD Ili'02 XDA Neo,02 XDA Exec,02 XDA Mini S,02 XDA Trion,02 XDA Orbit, Orange SPY Ml 000, Orange SPY M2000, Orange Spy M500, Orange Spy M2500, Orange Spy M600, Orange Spy M5000, Orange SPY M30000, Orange SPY M3l00, Orange SPY, Orange SPVEIOO, Orange SPY E200, Orange Spy C500, Orange Spy C550, Orange Spy C600, Orange SPY C700, Orange SPY CIOO, i-Mate Jam Black, i-Mate PDA2, i-Mate Jamin, i-Mate JasJar, iMate K-JAM, i-Mate JasJam, i-Mate Smartphone, i-Mate SP2, i-Mate SP3, i-Mate SP3i, iMate SP4m, i-Mate SP5, i-Mate SP5m, i-Mate Smartflip, T-Mobile MDA, T-Mobile MDA II, T-Mobile MDA III, T-MobiJe MDA Compact, T-Mobile MDA Compact II, T-Mobile MDACompactIlI, T-MobileMDAPro, T-MobileMDA Vario, T-MobileMDA VarioII, T-

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Mobile SDA, T-Mobile SDA II, T-Mobile SDA music, T-Mobile SDA music II, and TMobile Dash cellular telephones based on the above listed HTC platforms, as well as any other cellular telephones or devices acting or capable of acting under the OPRS standard or in the manner described and claimed in the '716 patent. 23. The infringement oftlle '716 patent alleged above has injured the Plaintiff and thus, it is entitled to recover damages adequate to compensate for Samsung, LO, and HTC's infringement, which in no event can be less than a reasonable royalty.

DEMAND FOR JURy TRIAL 24. Plaintiff hereby demands a jury trial on all claims and issues. PRAYER FOR RELIEF Wherefore, Plaintiff prays for entry ofjudgment: A. that Defendants, Samsung, LO, and HTC, have infringed one or more claims ofthe

'406 and '716 patent;
B.

that Defendants, Samsung, LO, and HTC, account for and pay to Plaintiffall damages

caused by the infringement of the '406 and '716 patent, which by statute can be no less than a reasonable royalty; C. that Plaintiff be granted pre-judgment and post-judgment interest on the damages

caused to them by reason of Defendants, Samsung, LG, and HTC's infringement ofthe '406 and '716 patent; D. E. that Plaintiff be granted its attorneys' fees in this action; that costs be awarded to Plaintiff;

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F.

that Plaintiff be granted such other and further relief as the Court may deem just and

proper under the current circumstances.

Respectfully submitted,

Date: 01/31107

lsI John Ward. Jr.
T. John Ward, Jr. Texas Bar No. 00794818 Law Office ofT. John Ward, Jr., P.C. 111 W. Tyler Street Longview, Texas 75601 Telephone: (903) 757-6400 Facsimile: (903) 757-2323 jwrmjwfirm.co111 E-mail: Edward W. Goldstein LEAD ATTORNEY Texas Bar No. 08099500 E-mail: [email protected] Christopher M. Faucett Texas BarNo. 00795198 E-mail: cfauceWrp!l:fpiplaw.com MattPrebeg Texas BarNo. 00791465 E-mail: mprebeg(w.gfpiplaw.com Corby R. Vowell Texas BarNo. 24031621 E-mail: cvoweJ1rtp.gfpiplaw.com GOLDSTElN, FAUCETI & PREBEG L.L.P 1177 West Loop South, Suite 400 Houston, TX 77027 Telephone: (713) 877-1515 Facsimile: (713) 877-1737

AITORNEYS FOR PLAINTIFF

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EXHIBIT C

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CISCO SYSTEMS, INC. and SCIENTIFIC ATLANTA, INC., ARRIS GROUP, INC., and THOMSON, INC. Plaintiffs
v.

GPNE CORP. Defendant.

§ § § § § § § § §

C. A. No. 07-671 (SLR) Jury Trial Demanded

DECLARATION OF ERNEST BODNER
I, Ernest Bodner, declare as follows: I. I am an attorney admitted to practice before the State of Hawaii. I am in-house counsel for Defendant OPNE Corp. If called as a witness I could competently testify to the following. 2. OPNE Corp. ("OPNE") is a Delaware Corporation with its principal place of business located at 2800 Woodlawn Drive, Suite 233, Honolulu,. HI 96822. 3. On January 31,2007, GPNE filed a patent inflingement :action on U.S. Pat. Nos. 6,282,406 and 7,03,716 in the Eastern District of Texas against Samsung Telecommunications America, LLC CSamsung"), C.A. No. 6:07-cv-059-LED, for manufacturing, using, and/or selling GPRS capable cellular phones. 4. OPNE and Samsung have agreed to a scheduling order and a protective order which were entered by the court on June 8, 2007 and November 15,2007, respectively. GPNE has filed their infringement contentions and Samsung ha.<; filed their invalidity contentions. GPNE and Samsung have submitted their terms and claim elements for

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construction and the court has scheduled a Markman hearing for August 7,2008. The trial date is scheduled for March 9, 2009. 5. On January 31,2007, GPNE filed a patent infringement action on U.S. Pat. No. 6,282,406 in the Eastern District of Texas against Time Warner Inc., Comcast Cable Communications, LLC, and Charter Communications, Inc. ("Texas DOCSIS Defendants"), C.A. No. 6:07-cv-060-LED, for manufacturing, using, or selling DOCSIS certified cable modems. 6. On June 13,2007, GPNE met to discuss settlement with the Texas DOCSIS Defendants under Federal Rule of Evidence 408.

On November 5,2007 a Joint Stipulation to Dismiss was filed and subsequently entered by the cOUli. 7. GPNE's documents related to this litigation are located in the offices of Goldstein, Faucett, and Prebeg, in Houston Texas. 8. GPNE does not have any documents or anticipated witnesses located in Delaware.

I declare under penalty of perjury under the laws ofthe United States that the foregoing is true and correct. Executed this Jrday of January, 2008 in Honolulu, Hawaii.

~~
By: Ernest Bodner

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

TIME WARNER CABLE, INC., Plaintiff,

v.
GPNE CORP.,

Civil Action No. 07-67-MPT

.~

Defendant.

MEMORANDUM OPINION

~

.= ....... L c:: r-

<::::]

I.

Introduction
w

United States Patent No. 6,282,406 (lithe '406 patent"), entitled "Paging Method and Apparatus," is owned by GPNE Corp. ("GPNE"). 'On February 2,2007, Time Warner Cable, Inc. ("TWC") filed suit in Delaware seeking a declaration that the '406 patent is invalid, that TWC has not infringed upon the '406 patent, and to issue an injunction against GPNE from charging infringement or instituting any legal action for infringement of the '406 patent. 1 Presently under consideration is GPNE's motion to dismiss, stay, or transfer this case to the Eastern District of Texas. 2

~-;

II.

Procedural History
On January 31,2007, GPNE filed a patent infringement case (lithe Texas

litigation") in the Eastern District of Texas against Time Warner, Inc. ("TWI"), Comcast Cable Communications LLC ("Comcast"), and Charter Communications, Inc. ("Charter")

1 2

0.1. 1 at 1. 0.1. 7.

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alleging infringement of the '406 patent. 3 The Texas litigation did not originally include TWC as a defendant, but instead listed TWI. 4 Two days later, on February 2,2007, TWC filed the present action in this court for a declaratory judgment of noninfringement and invalidity ofthe '406 patent. 5 In the Delaware complaint, TWC alleges that GPNE intends to include it as a defendant in the Texas litigation and in so doing would impact its business activities. 6 TWC maintains that it was not originally a defendant in the Texas litigation because TWI and TWC are separate entities. 7 On February 26,2007, GPNE amended its complaint in the Texas litigation to add TWC as a defendant.8 That same day, GPNE filed a motion to dismiss, stay, or transfer the Delaware case to the Eastern District of Texas, because the Texas case was the first action that involved the '406 patent.9 Accordingly, GPNE notes that since the Texas litigation is moving forward against all three defendants, this court should dismiss, stay, or transfer the matter to Texas in the interests of justice and judicial economy.10 Jurisdiction is proper in both the Eastern District of Texas and Delaware. The Eastern District of Texas has personal jurisdiction over the defendants, including TWC, as each defendant in the Texas litigation operates a high speed internet system in that jurisdiction, which is the basis of the alleged infringement,11 Delaware has personal

0.1. 1 at 2 (Texas litigation Case No.: 6:07-cv-60-LED (E.D. Tex.». Id. SId. at 1. 6 Id. at 2. 7 Id. a 0.1. 8, Ex. B (substituting TWC as defendant in place ofTWI). 9 0.1. 7. 10 0.1. 24 at 2-3. 11 Jd. at 3.
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jurisdiction to hear this matter, as all parties involved are incorporated in Delaware. All parties in both matters are large national corporations and none have their principal place of business in Texas or Delaware. 12

III.

Positions of the Parties

Motion to Dismiss or Stay
In the motion under consideration, GPNE asserts that the
first~to-file

rule is

applicable, which favors its first-filed action in Texas. GPNE maintains that the Delaware case should be dismissed or stayed in the interest of national uniformity in patent matters. 13 Because this matter is presently before two different federal courts of equal standing, GPNE contends that consolidation serves the interest of justice. 14 According to GPNE, the first-to-file rule hinges upon which court first obtains possession of the subject of the dispute, and not whether all parties have been identified or added to a case. 15 Furthermore, GPNE argues that even if the parties are not identical, dismissal is warranted if the cases substantially overlap on substantive issues. 16 Thus, GPNE argues that since the Texas litigation was filed two days before

12 0.1. 8, Ex. B at 1-2; see also 0.1. 24 at 4 ("While it is true that each party was incorporated in Delaware, Time Warner Cable's headquarters are in Stamford, Connecticut, Comcast's headquarters are in Philadelphia, Pennsylvania, Charter's headquarters are in St. Louis, Missouri, and GPNE's headquarters are in Honolulu, Hawaii.") (citation omitted). 13 Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931,937 (Fed. Cir. 1993) (First-to-file rule "raises the issue of national uniformity in patent cases, and invokes the special obligation of the Federal Circuit to avoid creating opportunities for dispositive differences among the regional circuits."). 14 Cashedge, Inc. v. Yodlee, Inc., 2006 U.S. Dist. LEXIS 50488, at *7-"8 (D. Del. July 19, 2006) (quoting Brunswick Corp. v. Precor Inc., 2000 U.S. Dist. LEXIS 22222, at *8 (D. Del. Dec. 12,2000) CWhererelated lawsuits exist, 'it is in the interests of justice to permit suits involving the same parties and issues to proceed before one court.'''». 15 Schering Corp. v. Amgen Inc., 969 F. Supp. 258,267 (D. Del. 1997) ("The first-filed rule turns on which court first obtains possession of the subject of the dispute, not the parties of the dispute.") (citations omitted). 16 0.1.8 a13.

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the Delaware declaratory action, the Texas matter takes precedence. 17 TWC also contends that the first-to-file rule is applicable; however, since the Delaware action was filed before TWC was added to the Texas suit, the Delaware District Court should decide the matter between the two companies. 18 TWC claims that since it was not a party to the Texas litigation on February 2,2007, it was the first-tofile. 19 TWC maintains that Delaware does not follow the substantial overlap test and prevents duplicative litigation only where the same issues arise between the same parties. 20 TWC asserts that 'TWI is a completely different company," which is separately traded on the New York Stock Exchange. 21 Both parties acknowledge that TWI is an 84% owner ofTWC and the remainder of the company is owned by Adelphia Communications Corp.22 Thus, TWC reiterates that because it was not a party to the Texas litigation, the instant action was the first-filed complaint between TWC and GPNE and, therefore, should be tried in Delaware. TWC further argues that because forum shopping was GPNE's sole motivation for choosing to litigate in Texas, its preference for that district should be ignored. TWC alleges that "GPNE chose the Eastern District of Texas simply because it is regarded as favorable by plaintiffs in patent cases."23 TWe notes that all parties to the litigation, including GPNE, are Delaware corporations and only forum shopping explains why the
17

18 19
20

[d. at 3-4. 0.1. 14 at 4-7. Id. at 5.

APV N. Am., Inc. v. Sig Simonazzi N. Am., Inc., 295 F. Supp. 2d 393, 396 (D. Del. 2002) (stating first-to-file rule in Delaware requires identical parties and does not follow substantial overlap test). 21 0.1. 14 at 4; id. at 5 ("None of the senior executive officers of TWC responsible for the management of TWC's business operation are officers or directors of TWI, and none of the directors of TWC are directors of TWI.") (citations omitted); 0.1. 15 at 1 (Block Declaration). 22 0.1. 8 at 1; see also 0.1. 15 at 1-2 (distinguishing TWI and TWC as separate entities). 23 0.1. 14 at 8.

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lawsuit was filed anywhere other than Delaware. 24 Finally, TWC argues that there are "sound reasons," such as, the location of the parties, witnesses, and documents, that dictate that the matter should be tried in Delaware. 25

Motion to Transfer
GPNE argues that this action should be transferred to Texas in the interest of judicial economy and justice since the Texas litigation involving similar issues and parties is currently proceeding. 26 GPNE states that because TWC is now a party to the Texas litigation, it would be economically wasteful to duplicate litigation in this court. 27 GPNE maintains that since jUdicial effort and resources are being expended in the Texas litigation, "suits involving like defendants who practice similar technology and are accused of infringing the same patent should also proceed in the Eastern District [of Texas]."2B TWC counters by arguing that GPNE, as the moving party, has failed to carry the heavy burden of showing that the balance of convenience of the parties and witnesses favors a transfer to Texas. 29 TWC claims that Delaware is a rational and legitimate forum since both companies are incorporated in this state. 3O GPNE does not offer any advantages over pursuing this litigation in Texas, rather than in Delaware. TWC maintains that Delaware is the "most natural and convenient forum," and, as the plaintiff

/d. Id. 26 0.1. 24 at 2; see also 28 U.S.C.A. § 1404(a) ("For the convenience of the parties and witnesses, in the interests of justice, a district court may transfer any civil action to any other district or division where it might have been brought."). 27 0.1. 8 at 6. 26 0.1. 24 at 2-3. 29 0.1. 14 at 12. 30 /d. at 14.
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in this case, its choice of forum should be respected and the motion to transfer should be denied. 31

IV.

Analysis
First~to·File

Motion to Dismiss Under the

Rule

GPNE contends that TWC's declaratory judgment action in this court should be dismissed because this case involves infringement of the same patent, the '406 patent, and concerns the same services and products first-filed in the Texas Iitigation. 32 The court finds that the present matter should be dismissed in accordance with the first-tofile ru