Google Inc. v. Compression Labs Inc Et Al - Document No. 8

Google Inc. v. Compression Labs Inc et al Doc.
8
Case 5:04-cv-03934-JF Document 8 Filed 10/12/2004 Page 1 of 24
1 Shelley K. Wessels (#152394)

WESSELS LAW GROUP
2 861 Bette Ave.
Cupertino, CA 95014
3 Tel.: 408.255.7964
4 Stephen G. Rudisill (of counsel)

Gary E. Hood (of counsel)
5 Russell J. Genet (of counsel)
Justin D. Swindells (of counsel)
6 Brian N. Anderson (of counsel)
JENKENS & GILCHRIST
7 225 West Washington St., Suite 2600
Chicago, Illinois 60606
8 Tel. 312-425-3900
Fax 312-425-3909
9
Counsel for Defendants Compression Labs, Inc.,
10 Forgent Networks, Inc. and General Instrument Corp.
11
12 UNITED STATES DISTRICT COURT
13 NORTHERN DISTRICT OF CALIFORNIA
14 OAKLAND DIVISION
15
16 GOOGLE, INC., a Delaware Corporation, Case No. C04 03934 CW
17 Plaintiff, DEFENDANTS’ NOTICE OF MOTION

AND MOTION TO DISMISS OR, IN THE
18 v. ALTERNATIVE, TO TRANSFER, AND
MEMORANDUM IN SUPPORT
19 COMPRESSION LABS, INC., a Delaware
corporation; FORGENT NETWORKS, INC., a Date: November 19, 2004
20 Delaware corporation; and GENERAL Time: 10:00 a.m.
INSTRUMENTS [sic] CORPORATION, a Court: Honorable Claudia Wilken
21 Delaware corporation,
Defendants.
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DEFENDANTS’ NOTICE OF MOTION AND MOTION TO DISMISS
OR, IN THE ALTERNATIVE, TO TRANSFER, AND
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Dockets.Justia.com
1 TABLE OF CONTENTS
Page
2
3 MEMORANDUM IN SUPPORT......................................................................................................1
4 I. INTRODUCTION .................................................................................................................1
5 II. STATEMENT OF FACTS ....................................................................................................2

6 III. ARGUMENT.........................................................................................................................4
7 A. There Is No Actual Controversy Between Google and GI or Forgent
8 Because Neither GI Nor Forgent Has an Ownership Interest In the ’672
Patent..........................................................................................................................4
9
B. The First-To-File Rule Requires That This Action Be Dismissed or
10 Transferred in Favor of the First-Filed Case Pending in the Eastern
District of Texas.........................................................................................................7
11
C. Defendants Are Not Subject to Personal Jurisdiction in this District. .....................10
12
1. Google Has Failed to Allege that This Court Has Personal
13
Jurisdiction Over Defendants.......................................................................10
14
2. There Exists No Sufficient Basis for Personal Jurisdiction Over
15 CLI. ..............................................................................................................11
16 a. Google Cannot Demonstrate General Personal Jurisdiction

Over CLI. .........................................................................................12
17
b. Google Cannot Demonstrate Specific Personal Jurisdiction
18
Over CLI. .........................................................................................12
19
i. CLI Does Not Have Sufficient Minimum Contacts
20 with This District. ................................................................13
21 ii. An Exercise of Personal Jurisdiction Over CLI

Would Violate Standards of Fair Play and
22 Substantial Justice. ...............................................................16
23 IV. CONCLUSION....................................................................................................................18
24
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1 TABLE OF AUTHORITIES
2 Cases
3 Aetna Life Ins. Co. v. Haworth,

300 U.S. 227 (1937) ................................................................................................................5
4
Akro Corp. v. Luker,
5 45 F.3d 1541 (Fed. Cir. 1995).........................................................................................15, 17
6 Alltrade, Inc. v. Uniweld Prods., Inc.,

946 F.2d 622 (9th Cir. 1991) ..................................................................................................8
7
Asahi Metal Indus. Co. v. Super. Ct. of Cal.,
8 480 U.S. 102 (1987) ..............................................................................................................19
9 Beverly Hills Fan Co. v. Royal Sovereign Corp.,

21 F.3d 1558 (Fed. Cir. 1994)...............................................................................................12
10
Biovail Labs., Inc. v. TorPharm, Inc.,
11 No. 01 C 9008, 2002 U.S. Dist. LEXIS 23125 (N.D. Ill., Nov. 21, 2002) .............................6
12 Cardinal Chem. Co. v. Morton Int’l, Inc.,

508 U.S. 83 (1993) ................................................................................................................12
13
Centocor, Inc. v. MedImmune, Inc.,
14 Co C 02-03252, 2002 WL 31465299 (N.D. Cal. Oct. 22, 2002)........................................8, 9
15 Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found.,

297 F.3d 1343 (Fed. Cir. 2002).......................................................................................13, 17
16
Elecs. For Imaging, Inc. v. Coyle,
17 340 F.3d 1344 (Fed. Cir. 2003)......................................................................................passim
18 EMC Corp. v. Norand Corp.,

89 F.3d 807 (Fed. Cir. 1996)...................................................................................................5
19
E-Z Bowz v. Prof’l Prods.,
20 No. 00 Civ. 8670, 2003 U.S. Dist. LEXIS 15257 (S.D.N.Y., Sept. 15,
2003) .......................................................................................................................................6
21
Grain Processing Corp. v. Am. Maize-Prods. Co.,
22 840 F.2d 902 (Fed. Cir. 1988).............................................................................................5, 6
23 Harris Rutsky & Co Ins. Servs., Inc. v. Bell & Clements Ltd.,
328 F.3d 1122 (9th Cir. 2003) ..............................................................................................12
24
Helicopteros Nacionales De Colombia v. Hall,
25 466 U.S. 408 (1984) ..............................................................................................................14
26 Hildebrand v. Steck Mfg. Co.,

279 F.3d 1351 (Fed. Cir. 2002).............................................................................................16
27
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1 Inamed Corp. v. Kuzmak ,

249 F.3d 1356 (Fed. Cir. 2001).................................................................................14, 17, 19
2
Int’l Shoe Co. v. State of Washington,
3 326 U.S. 310 (1945) ........................................................................................................13, 14
4 Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co.,

342 U.S. 180 (1952) ................................................................................................................8
5
Lypka v. Mercantile Bank, et al.,
6 No C 04-00006, 2004 WL 1774246 (N.D. Cal. Aug. 9, 2004).............................................12
7 Oacis Health Care Systs., Inc. v. Allcare Health Mgmt. Systs.,

C-99-5112, 2000 WL 550040 (N.D. Cal. Apr. 25, 2000) .........................................15, 16, 17
8
Pacesetter Systs., Inc. v. Medtronic, Inc.,
9 678 F.2d 93 (9th Cir. 1982) ....................................................................................................8
10 Paxonet Communications., Inc. v. Transwitch Corp.,

303 F. Supp. 2d 1027 (N.D. Cal. 2003) ..........................................................................10, 11
11
Peak v. Green Tree Fin. Servicing Corp.,
12 C 00-0953, 2000 WL 973685 (N.D. Cal. July 7, 2002)..........................................................9
13 Preiser v. Newkirk,
422 U.S. 395 (1975) ................................................................................................................5
14
Rawlings v. National Molasses Co.,
15 394 F.2d 645 (N.D. Cal. 1968) ...............................................................................................6
16 Red Wing Shoe Co. v. Hockerson-Halberstadt,

148 F.3d 1355 (Fed. Cir. 1998)...........................................................................13, 14, 15, 16
17
RJF Holdings III, Inc. v. Fefractec, Inc.,
18 No. 03-1600, 2003 U.S. Dist. LEXIS 22144 (E.D. Pa. Nov. 24, 2003) .................................8
19 Spectronics Corp. v. H.B. Fuller Co.,

940 F.2d 631 (Fed. Cir. 1991).................................................................................................5
20
Super Sack Mfg. Corp. v. Chase Packaging Corp.,
21 57 F.3d 1054 (Fed. Cir. 1995).............................................................................................5, 7
22 The Procter & Gamble Co. v. Kimberly Clark Corp.,

684 F. Supp 1403 (N.D. Tex. 1987) .......................................................................................6
23
Ward v. Follett Corp.,
24 158 F.R.D. 645 (N.D. Cal. 1994) ........................................................................................3, 8
25 Statutes
26 CAL. CIV. CODE § 410.10..................................................................................................................13
27
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1 Other Authorities
2 Fed. R. Civ. P. 4(e) ...........................................................................................................................13
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24
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1 NOTICE OF MOTION AND MOTION
2 Defendants Forgent Networks, Inc. (“Forgent”) and General Instrument Corporation (“GI”)
3 move under Federal Rule of Civil Procedure 12(b)(1) for an order of dismissal. In the alternative,
4 they join with Defendant Compression Labs, Inc. (“CLI”) in moving to dismiss or transfer this
5 action to the Eastern District of Texas. All Defendants move to dismiss under Federal Rule of Civil
6 Procedure 12(b)(2). The motion will be heard before the Honorable Claudia Wilken, in Courtroom
7 2, 4th Floor of the Federal Building, 1301 Clay Street, Suite 400S, Oakland, CA 94612-5212 on
8 November 19, 2004, or on such date as the Court sets.
9 This action should be dismissed as to Defendants Forgent and GI, first, because neither has
10 any ownership interest in the patent that is the subject of Plaintiff’s declaratory judgment action.
11 There is no case or controversy and thus no subject matter jurisdiction of the action over those two
12 defendants. Second, the Court should transfer the action because there is a controversy about the
13 patent between Plaintiff and Defendant CLI, but that case was filed first, six weeks before this one,
14 in the United States District Court for the Eastern District of Texas. The instant action should be
15 dismissed in favor of that one or, at a minimum, be transferred there. Finally, the case should be
16 dismissed against Defendants for a second reason: Plaintiff has not alleged a basis for personal
17 jurisdiction over Defendants and the sole owner of the patent- in-suit, CLI, has not engaged in
18 sufficient activity to establish such jurisdiction.
19
20 MEMORANDUM IN SUPPORT
21 I. INTRODUCTION
22 The present action should be dismissed or transferred for multiple separate and independent
23 reasons.
24 First, the Court should dismiss the instant complaint as to defendants GI and Forgent, as
25 neither has an ownership interest in the patent that is the subject of plaintiff Google’s declaratory
26 judgment complaint. Indeed, CLI is now the sole owner of the patent- in-suit. Maintaining
27 jurisdiction over a declaratory judgment action requires that there be an actual controversy between
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1 the plaintiff and defendant. Google has failed to allege, and indeed cannot now allege, any facts
2 that would establish that an actual controversy exists between Google and either GI or Forgent.
3 Accordingly, the instant complaint should be dismissed against both GI and Forgent.
4 Second, the Court should either dismiss this case or transfer it to the Eastern District of
5 Texas. It is that court that was first seized of jurisdiction over the subject matter of the instant case
6 – the infringement of a patent owned by CLI by using the JPEG baseline standard. On August 5,
7 2004, well over a month before Google filed its Complaint here seeking a declaratory judgment of
8 non- infringement, invalidity and enforceability of CLI’s patent, CLI filed a lawsuit in the Eastern
9 District of Texas alleging infringement of the same patent by Google and ten other alleged
10 infringers who implement the JPEG baseline standard. This single patent, moreover, is at issue in
11 two additional cases CLI filed in the Eastern District of Texas on April 22, 2004, more than four
12 months before Google filed its Complaint here. All three of these cases are scheduled for trial in
13 October, 2005. Because the Eastern District of Texas has long been in possession of first- filed
14 cases between the parties that will address any and all claims regarding the one patent at issue in
15 those cases and here, this Court should apply the first-to- file rule and dismiss or transfer the present
16 case to the Eastern District of Texas.
17 Third, this Court lacks personal jurisdiction. The Complaint filed in this case by Google
18 tacitly acknowledges as much, as it does not even attempt to allege personal jurisdiction over any of
19 the Defendants. Moreover, Google has not and cannot establish that the sole owner of the patent-in-
20 suit, CLI, has engaged in any activity in this district that gives rise to personal jurisdiction. The
21 instant Complaint should be dismissed.
22 II. STATEMENT OF FAC TS
23 The patent at issue in this case, United States Patent No. 4,698,672 (“the ’672 patent”),
24 covers a digital image compression standard known as JPEG. 1 The first named defendant, CLI, is
25 the sole owner of the ’672 patent. CLI is a Delaware corporation with its principal place of business
26 1
The facts related below are set forth in the Declaration of L. Steven Leshin accompanying this Motion (“Leshin
27 Decl.”) and accompanying exhibits. Defendants request that the Court take judicial notice of these facts under Fed. R.
Evid. 201.
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1 in Austin, Texas. CLI is a wholly owned subsidiary of the second- named defendant in this action,
2 Forgent, a Delaware corporation with a principal place of business in Austin, Texas. The third
3 named defendant, GI, a former co-owner of the ’672 patent, does business as the Broadband
4 Communications Sector of Motorola, Inc., is a Delaware corporation, and has a principal place of
5 business at 101 Tournament Drive, Horsham, Pennsylvania.
6 On April 22, 2004, more than four months before Google filed this lawsuit, CLI
7 simultaneously filed two complaints alleging infringement of the ’672 patent against Agfa and thirty
8 other defendants in the United States District Court for the Eastern District of Texas. These
9 lawsuits were assigned case numbers 2:04-CV-158 and 2:04-CV-159 (“the Agfa Texas Cases”).
10 The Agfa Texas Cases were both initially assigned to Judge Ward and later reassigned to Judge
11 Folsom.
12 On August 5, 2004, six weeks before Google filed the present lawsuit, CLI filed a third
13 lawsuit in the Eastern District of Texas. In this third suit, CLI alleges that Google (and ten
14 additional defendants) infringe the same ’672 patent by using the JPEG baseline standard. That
15 case, assigned case number 2:04-CV-294 (“the Google Texas Case”), is now also pending before
16 Judge Folsom. All three Texas cases, each involving the same ’672 patent, were pending before
17 Judge Folsom in the Eastern District of Texas long before Google filed suit in this Court.
18 On September 17, 2004, Google filed the instant action seeking this Court’s declaration that
19 the ’672 patent is not infringed, is unenforceable, or is invalid. Shortly thereafter, on September 27,
20 2004, instead of answering CLI’s complaint, Google and other defendants filed a Rule 12(b)(7)
21 motion to dismiss the Google Texas Case, on the basis that CLI allegedly failed to join an
22 indispensable party, GI.
23 On October 4, 2004, Judge Folsom held a case management conference regarding each of
24 the three above-referenced actions in the Eastern District of Texas. During this hearing, Judge
25 Folsom set a trial date of October, 2005, for all three actions. In addition, Judge Folsom denied
26 multiple motions to stay discovery sought by defendants in the Agfa Texas Cases and Google Texas
27 Case. [See Leshin Decl. Ex. A (10/04/04 Minute Entry).] Discovery in the Agfa Texas Cases is
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1 moving forward. Indeed, the parties in the Agfa Texas Cases served interrogatories and requests for
2 the production of documents weeks ago, with CLI’s responses due on October 18, 2004.
3 On October 8, 2004, GI irrevocably assigned, transferred, conveyed, sold and released all of
4 its rights to the ’672 patent to CLI. [See id. Ex. B (10/08/04 Patent Assignment).] GI has also
5 executed a sworn declaration confirming that it has divested its entire right, title and interest in the
6 ’672 patent and has disclaimed all interests in the ’672 patent or the outcome of any litigation
7 pertaining to the ’672 patent. [See id. Ex. C (Affidavit of GI).] Further, CLI and Forgent have
8 agreed to have its counsel, Jenkens & Gilchrist, defend GI and Motorola against all present and
9 future lawsuits and litigation relating to the ’672 Patent. In sum, GI no longer has any ownership
10 interest in the ’672 Patent and CLI and Forgent’s counsel now also represents GI and Motorola in
11 any suits arising from the ’672 Patent.
12 III. ARGUMENT
13 A. There Is No Actual Controversy Between Google and GI or Forgent Because Neither

GI Nor Forgent Has an Ownership Interest In the ’672 Patent.
14
15 The instant declaratory judgment complaint should be dismissed as to both GI and Forgent
16 because there is no actual controversy between Google and either GI or Forgent.
17 An actual controversy must be present before a declaratory judgment action is ripe for
18 adjudication. See Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 239-41 (1937). The Federal
19 Circuit has established a two-part test for determining whether jurisdiction of a declaratory
20 judgment action exists in patent cases: First, the plaintiff must actually produce or be prepared to
21 produce an allegedly infringing product. EMC Corp. v. Norand Corp., 89 F.3d 807, 811 (Fed. Cir.
22 1996). Second, “the patentee’s conduct must have created an objectively reasonable apprehension
23 on the part of the plaintiff that the patentee will initiate suit.” Id. (emphasis added); see also
24 Spectronics Corp. v. H.B. Fuller Co., 940 F.2d 631, 634 (Fed. Cir. 1991). Accordingly, the “actual
25 controversy” requirement precludes a declaration regarding the validity or enforceability of claims
26 unless a party has a reasonable apprehension that it is facing or will face claims of infringement by
27 the patentee regarding those patent claims. “A certain degree of adverseness must be present in
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1 order to establish the minimum controversy.” EMC, 89 F.3d at 811. Moreover, “the actual
2 controversy must be extant at all stages of review, not merely at the time the complaint is filed.”
3 Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1058 (Fed. Cir. 1995) (quoting
4 Preiser v. Newkirk, 422 U.S. 395, 401 (1975)). Thus, where the controversy at issue is resolved
5 subsequent to the filing of the complaint, the court is divested of jurisdiction. See Grain Processing
6 Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 906 (Fed. Cir. 1988) (finding court jurisdiction
7 extinguished when patent holder alleviated controversy by abandoning allegation of infringement
8 prior to trial).
9 The present case does not meet the Federal Circuit’s second requirement. With respect to
10 GI, as noted above, GI no longer has any ownership interest in the ’672 patent. On October 8, 2004
11 GI irrevocably assigned, transferred, conveyed, sold and released all of its rights to the ’672 patent
12 to CLI. [See Leshin Decl. Exs. B, C.] Accordingly, it cannot be disputed that an actual controversy
13 no longer exists between Google—who seeks a declaration that it does not infringe the ’672 patent
14 and that the ’672 patent is invalid and unenforceable—and GI—who no longer has any ownership
15 interest in the patent and cannot seek to enforce the patent, now or in the future. The present case
16 cannot proceed against GI. See, e.g., Grain Processing, 840 F.2d at 906; The Procter & Gamble
17 Co. v. Kimberly Clark Corp., 684 F. Supp 1403, 1407 (N.D. Tex. 1987) (“A party which divests
18 itself of all of its interest in a patent does not have a sufficient stake in the outcome of the
19 controversy to require that it remain a party. Any other result would exalt form over substance.”);
20 Rawlings v. National Molasses Co., 394 F.2d 645, 647-48 (N.D. Cal. 1968) (holding former co-
21 owner of patent who assigned to plaintiff all its rights in the patent was not required to be a party
22 because it “has no capacity to sue strangers for infringement of the patent”); E-Z Bowz v. Prof’l
23 Prods., No. 00 Civ. 8670, 2003 U.S. Dist. LEXIS 15257, at *5 (S.D.N.Y., Sept. 15, 2003)
24 (following Kimberly Clark and holding, “Nothing in [the former co-owner’s] subsequent
25 assignment [after the complaint was filed] requires that she be dragooned into being part of a
26 litigation in which she has disclaimed all interest.”); Biovail Labs., Inc. v. TorPharm, Inc., No. 01
27 C 9008, 2002 U.S. Dist. LEXIS 23125, at 3 (N.D. Ill., Nov. 21, 2002) (holding a party that assigns
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1 all of its rights and interests under a patent should not be compelled to litigate an infringement
2 action merely because it was the patent owner the day case was filed and reasoning that a party
3 which divests itself of all of its interest in a patent does not have a sufficient stake in the outcome of
4 the controversy to require that it remain a party).
5 The fact that GI divested all of its rights in the ’672 patent after Google filed the instant
6 complaint is a non- issue for two reasons. First, no actual controversy existed between GI and
7 Google on September 17, 2004, the date the instant action was filed. At that time, despite then
8 being a co-owner of the ’672 patent, an agreement between GI and CLI clearly provided that GI did
9 not have rights under the ’672 patent to sue third parties that use the JPEG standard or to defend
10 against any action involving JPEG. [See Leshin Decl., Ex. D.] 2 Rather, only CLI possessed those
11 rights. Id. As such, on September 17, 2004, Google could not have had a reasonable apprehension
12 that it would face an infringement suit from GI for implementing the JPEG baseline standard in its
13 products. Moreover, GI has never implicitly or expressly charged Google (or any other entity) with
14 infringement of the ’672 patent, nor has GI acted in way that would create in Google a reasonable
15 apprehension of litigation. Tellingly, while describing at length the actions of CLI, Google’s
16 complaint is entirely silent as to any alleged actions of GI that would have created for Google a
17 reasonable apprehension of suit.
18 Second, and more simply, even if an actual controversy existed at the time Google filed the
19 instant complaint, the Federal Circuit requires that an actual controversy exist at all stages of the
20 litigation. See Super Sack, 57 F.3d at 1058. By assigning all of its right, title and interest in and to
21 the ’672 patent to CLI on October 8, 2004, any alleged actual controversy that might have existed
22 involving GI was eliminated. GI should be dismissed from this case.
23
24
25 2
Article 4.2 of the December 9, 2003 Patent License Agreement provides, in relevant part:
26 Licensee and its subsidiaries, including GI, hereby conveys, grants, assigns and otherwise releases to Grantor the
sole, exclusive and unrestricted right and power to enforce, by licensing, litigation or otherwise, the Jointly Owned
27 Patents in the JPEG Standard field of use . . . .
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1 As for Forgent, it has never had an ownership interest in the ’672 patent, and Google has
2 alleged none. Accordingly, as with GI, it cannot be disputed that there is not and never has been an
3 actual controversy between Google and Forgent. Forgent should be dismissed from this case.
4 B. The First-To-File Rule Requires That This Action Be Dismissed or Transferred in

Favor of the First-Filed Case Pending in the Eastern District of Texas.
5
6 The first-to-file rule requires that this case be dismissed or transferred to the Eastern District
7 of Texas. CLI filed the Google Texas Case on August 5, 2004, in the Eastern District of Texas; it
8 involves identical issues and parties to the present action. Moreover, the Eastern District of Texas
9 first obtained possession of the subject matter of this suit—infringement of the ’672 patent—with
10 the filing of the First Texas Cases on April 22, 2004. Accordingly, at worst, the Google Texas Case
11 is the first- filed case, and this Court should decline jurisdiction over the present later- filed action.
12 The doctrine of federal comity holds that a district court should decline jurisdiction over a
13 dispute that is already properly before another district court. Kerotest Mfg. Co. v. C-O-Two Fire
14 Equip. Co., 342 U.S. 180, 185-86 (1952). In the Ninth Circuit, the first-to-file rule embodies the
15 principles of federal comity. Pacesetter Systs., Inc. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir.
16 1982). The first-to-file rule empowers a district court to transfer, stay or dismiss a later-filed action
17 such as this one when a complaint involving the same subject matter has already been filed in
18 another district court. Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 623 (9th Cir. 1991); see
19 also Ward v. Follett Corp., 158 F.R.D. 645, 648 (N.D. Cal. 1994).
20 In deciding whether the first-to- file rule applies, a court must look to three factors: (1) the
21 chronology of the two actions; (2) the similarity of the parties; and (3) the similarity of the issues.
22 Alltrade, 946 F.2d at 625-26; Ward, 158 F.R.D. at 648. It is important to note, however, that
23 “courts generally do not require identical issues or parties so long as the actions involve closely
24 related questions or common subject matter.” Centocor, Inc. v. MedImmune, Inc., Co C 02-03252,
25 2002 WL 31465299, at *3 (N.D. Cal. Oct. 22, 2002) (emphasis added) (collecting cases); see also
26 RJF Holdings III, Inc. v. Fefractec, Inc., No. 03-1600, 2003 U.S. Dist. LEXIS 22144, at *5-6 (E.D.
27 Pa. Nov. 24, 2003) (“The first- filed rule turns on which court first obtains possession of the subject
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1 of the dispute, not the parties of the dispute.”); Peak v. Green Tree Fin. Servicing Corp., C 00-
2 0953, 2000 WL 973685, at *2 (N.D. Cal. July 7, 2002) (“Though the named plaintiffs are different,
3 the issues presented in this case sufficiently duplicate those presented to the Eastern District [of
4 California] . . . to justify dismissing this case. Allowing this case to proceed would both impede
5 judicial efficiency and run a significant risk of conflicting judgments.”).
6 Under the first-to- file rule’s first factor, chronology of the actions, there can be no dispute
7 that all three actions CLI filed in the Eastern District of Texas predate Google’s present Complaint.
8 The Agfa Texas Cases and the Google Texas Case were filed in the Eastern District on April 22,
9 2004 and August 5, 2004, respectively. The present action was not filed in this Court until
10 September 17, 2004, over one month later.
11 Similarly, under the first-to- file rule’s third factor, the issues presented in this case and the
12 Texas cases involve identical subject matter. The Agfa Texas Cases, the Google Texas Case, and
13 the instant case all involve the question of whether the ’672 patent is infringed by devices and
14 methods implementing the JPEG baseline algorithm. In fact, defendants in the Agfa Texas Case
15 have already conceded that both actions involve identical subject matter. 3
16 Finally, under the first-to- file rule’s second factor—similarity of the parties—the parties in
17 this case and the Google Texas Case overlap. CLI and Google are parties to both lawsuits. The fact
18 that Google has erroneously elected to name GI and Forgent in its Complaint does not allow Google
19 to escape the first-to- file rule. Indeed, exact and identical parties are not required for the first-to- file
20 rule to apply. See Centocor, 2002 WL 31465299, at *3. The principal actors to which the common
21 subject matter pertains in both cases are identical. Google’s selective addition of erroneous parties
22 may not divest the first-filed court of jurisdiction. 4
23
3
“There is no question here that there is an identity of issues with the first filed Delaware DJ Action since the
24 assertion of the ’672 Patent against the JPEG standard is the foundation to both actions.” Motion to Dismiss Under Fed.
R. Civ. P. 12(B)(7) Or, In The Alternative, Motion To Transfer at 20 (emphasis added) (Civil Action No. 2:04-CV-158-
25 DF) (Court Docket No. 45).
26 4
Contrary to arguments made by Google and other defendants in the Agfa Texas Cases and the Google Texas Case,
neither Forgent nor GI is a necessary or an indispensable party to this litigation, and naming them here in no way causes
27 this case somehow to become first-filed. While not presently at issue here, the premise upon which the defendants in
the Agfa Texas Cases and Google Texas Case have based their arguments in support of their motions to dismiss in that
28 8 Case No. C04 03934 CW
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1 Indeed, this Court recently applied the first-to- file rule in a case involving more disparate
2 issues than are present here. See Paxonet Communications., Inc. v. Transwitch Corp., 303 F. Supp.
3 2d 1027 (N.D. Cal. 2003) (Wilken, J.). In Paxonet, Transwitch filed a patent infringement lawsuit
4 against Paxonet in the District of Massachusetts, alleging infringement of two patents. Id. at 1028.
5 Thereafter, Paxonet filed a motion to dismiss that complaint for lack of personal jurisdiction. Id.
6 Approximately three weeks later, Paxonet filed suit in the Northern District of California seeking a
7 declaration that it did not infringe the two patents at issue in the Massachusetts action as well as a
8 third patent owned by Transwitch. Id. In that action, Paxonet also sought a declaration that the
9 three patents were invalid. Id. Two months later, Paxonet and a third party, Raza Microelectronics
10 (“Raza”), together filed a separate lawsuit in the Northern District of California (1) alleging that
11 Transwitch infringed a fourth patent owned jointly by Paxonet and Raza; and (2) seeking a
12 declaration that the same three Transwitch patents at issue in the first California action were invalid
13 and that both Paxonet and Raza did not infringe the same three patents at issue in the first California
14 action. Id.
15 Transwitch moved to consolidate the two California actions and to transfer the consolidated
16 California case to Massachusetts or to stay the consolidated action until the Massachusetts Court
17 ruled on the motion to dismiss. Id. This Court first consolidated the two California actions,
18 reasoning that although one of the California actions involved an additional patent, judicial
19 efficiency would be served and consolidation was appropriate because the technology of the
20 additional patent appeared related. Id. at 1029. Then, applying the first-to-file rule, the Court
21 stayed the consolidated California action until the Massachusetts district court ruled on the pending
22
litigation – that GI is a necessary and indispensable party and its absence requires dismissal of those cases – is now
23 irrelevant as more fully set forth above. More importantly, the premise is entirely incorrect. The federal circuit has held
that even a sole owner is not per se an indispensable party to an action involving the patent owned. See Dow Chem. Co.
24 v. Exxon Corp., 139 F.3d 1470, 1479 (Fed. Cir. 1998). In doing so, it stated: “We agree with the district court that
joinder [of the patent owner] was not required because, ‘as a practical matter, Exxon [Corp] has both the duty and
25 capability of protecting [the patent owner’s] interests. . . . Therefore, given ECC’s substantial rights in the ’783 patent
and Exxon Corp's vigorous defense of the ’783 patent in this litigation, we agree with the district court that joinder of
26 [the patent owner] was not required.” Id. (internal citations omitted). Thus, in circumstances even more compelling
than those existing prior to GI’s assignment here, the Federal Circuit has held that joinder of the absent patent owner is
27 not required. With the GI assignment, the lack of any need for joinder could not be more clear, so that joinder cannot
magically convert the instant case to first-filed.
28 9 Case No. C04 03934 CW
CHICAGO 296552v1 22768-00143
1 motion to dismiss, and further held that if the Massachusetts district court retained the case, this
2 Court would transfer the consolidated California case to Massachusetts. Id. In making its decision,
3 the Court referred to the first-to- file rule as an “ordinary procedure” and reasoned that because the
4 Massachusetts action was clearly filed first, “this Court would ordinarily defer to the Massachusetts
5 district court’s decision as to whether it will proceed with the case.” Id.
6 In view of Paxonet and the applicable Ninth Circuit case law, this Court should apply the
7 first-to-file rule to the instant case. Despite the fact that the parties and patents at issue in the
8 competing cases were not the same, this Court in Paxonet deferred to the first- filed case as ordinary
9 procedure. The decision is simpler here. The competing cases do not contain different patents, but
10 instead the same single patent is at issue in each of the cases. Accordingly, this Court should
11 dismiss this case, and at worst transfer it to the Eastern District of Texas.
12 C. Defendants Are Not Subject to Personal Jurisdiction in this District.
13 Notwithstanding the first-to- file rule, the Court should dismiss Google’s complaint under
14 Federal Rule of Civil Procedure 12(b)(2). First and foremost, Google’s Complaint fails to allege
15 personal jurisdiction over any of the defendants, highlighted most directly by Google’s failure to
16 mention personal jurisdiction at all in its Complaint. Furthermore, Google cannot provide any facts
17 to support personal jurisdiction over CLI, the sole patent owner, because none exists.
18 1. Google Has Failed to Allege that This Court Has Personal Jurisdiction Over
Defendants.
19
20 The initial burden of establishing a court’s jurisdiction is on the party invoking that
21 jurisdiction. Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 98 (1993). To make a prima
22 facie showing of personal jurisdiction sufficient to survive a motion to dismiss, “a plaintiff need
23 only allege facts that, if true, would support [the court exercising] personal jurisdiction over the
24 defendants.” Lypka v. Mercantile Bank, et al., No C 04-00006, 2004 WL 1774246 (N.D. Cal. Aug.
25 9, 2004) (slip copy) (citing Harris Rutsky & Co Ins. Servs., Inc. v. Bell & Clements Ltd., 328 F.3d
26 1122, 1129 (9th Cir. 2003)); see also Elecs. For Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed.
27 Cir. 2003).
28 10 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143
1 While this standard may be minimal, Google has failed even to attempt to satisfy it here.
2 Google’s Complaint does not state or allege any connection between CLI, Forgent, or GI and this
3 California or this district. Furthermore, while the Complaint includes at least conclusory averments
4 regarding subject matter jurisdiction and venue, the Complaint does not even give such minimal
5 treatment to personal jurisdiction. It does not mention personal jurisdiction anywhere at all.
6 Google’s Complaint thus sets forth no facts at all providing a basis for this Court to exercise
7 personal jurisdiction over any of the defendants. Google has not even approached this most basic
8 pleading threshold. As such, the Court has no basis before it from which to determine that it can
9 properly exercise personal jurisdiction over CLI, Forgent, and GI. Google’s complaint is facially
10 deficient and should for this reason alone be dismissed.
11 2. There Exists No Sufficient Basis for Personal Jurisdiction Over CLI.
12 In patent cases, a court should apply the law of the Federal Circuit to evaluate personal
13 jurisdiction. Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564-65 (Fed. Cir.
14 1994). Before a federal court may exercise personal jurisdiction over a defendant, the court must
15 determine whether (1) an applicable statute potentially confers jurisdiction by authorizing service of
16 process, and (2) whether the exercise of jurisdiction would satisfy the requirements of due process.
17 See Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343, 1349
18 (Fed. Cir. 2002).
19 Federal Rule of Civil Procedure 4(e) allows a plaintiff to rely on the long-arm statute of the
20 state in which the federal district court sits to obtain authorization for the exercise of personal
21 jurisdiction. Fed. R. Civ. P. 4(e). As the Court is no doubt aware, in California, the long-arm
22 statute extends personal jurisdiction to the limits permitted by the Due Process Clause of the United
23 States Constitution. See CAL. CIV. CODE § 410.10. “[D]ue process requires only that in order to
24 subject a defendant to a judgment in personam, if he be not present within the territory of the forum,
25 he have certain minimum contacts with it such that the maintenance of the suit does not offend
26 traditional notions of fair play and substantial justice.” Int’l Shoe Co. v. State of Washington, 326
27 U.S. 310, 316 (1945).
28 11 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143
1 Under Federal Circuit law, a defendant’s activities in a forum state must be “continuous and
2 systematic” for a court to assert “general” personal jurisdiction. Red Wing Shoe Co. v. Hockerson-
3 Halberstadt, 148 F.3d 1355, 1359 (Fed. Cir. 1998). If a defendant’s activities with the forum do not
4 rise to the level to support general jurisdiction, the court may exercise specific jurisdiction over the
5 defendant only if the factual basis for the complaint “arises out of or relates to” the forum and
6 “creates a substantial connection with the forum.” Id. Neither general nor specific personal
7 jurisdiction exists here for CLI.
8 a. Google Cannot Demonstrate General Personal Jurisdiction Over CLI.
9 Google has not alleged that this Court can properly exercise general personal jurisdiction
10 over CLI. And for good reason. CLI lacks the necessary continuous and systematic contacts with
11 the state of California to give rise to such sweeping jurisdiction in this district.
12 CLI has no offices, facilities, bank accounts, real estate, telephone numbers or postal
13 addresses in the state of California, and does not manufacture or deliver products into this district.
14 [Leshin Decl. ¶¶ 7, 8.] CLI has negotiated and executed non-exclusive licenses of the ’672 patent
15 with only a handful of California residents. Such minimal and sporadic contact, however, is not
16 sufficient to exercise general personal jurisdiction over CLI. See Helicopteros Nacionales De
17 Colombia v. Hall, 466 U.S. 408, 416-18 (1984).
18 b. Google Cannot Demonstrate Specific Personal Jurisdiction Over CLI.
19 Similarly, Google has not alleged that this Court can properly exercise specific personal
20 jurisdiction over CLI. And again, it has failed to do so for good reason. CLI has not engaged in
21 activities directed toward this district to give rise to specific personal jurisdiction over CLI in this
22 district.
23 The Federal Circuit has adopted a three- factor test for determining whether the exercise of
24 specific personal jurisdiction over an out-of-state defendant comports with due process: (1) whether
25 the defendant purposefully directed its patent-related activities at residents of the forum; (2) whether
26 the claim arises from or relates to the defendant’s activities with the forum state; and (3) whether
27 assertion of jurisdiction is reasonable and fair. Inamed Corp. v. Kuzmak , 249 F.3d 1356, 1360 (Fed.
28 12 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143
1 Cir. 2001). The first two factors correspond with the “minimum contacts” prong of the
2 International Shoe analysis, and the third factor corresponds to the “fair play and substantial justice
3 prong.” Id. “While the plaintiff bears the burden to establish minimum contacts, upon this
4 showing, defendants must prove that the exercise of jurisdiction is unreasonable.” Elecs. For
5 Imaging, 340 F.3d at 1350.
6 i. CLI Does Not Have Sufficient Minimum Contacts with This

District.
7
8 Cease-and-desist letters related to the cause of action at issue are not sufficient to create
9 minimum contacts to give rise to specific personal jurisdiction over a party. Red Wing, 148 F.3d at
10 1360. The Federal Circuit has explained that “a patentee should not subject itself to personal
11 jurisdiction in a forum solely by informing a party who happens to be located there of suspected
12 infringement.” Id. at 1361. “Rather, ‘other activities’ distinct from threats of infringement are
13 required for a patentee to be subject to personal jurisdiction in the forum.” Elecs. For Imaging, 340
14 F.3d at 1351 (emphasis added).
15 CLI has sent letters to Google in California regarding licensing and infringement of the ’672
16 patent, has had telephone conversations with Google regarding licensing and infringement of the
17 ’672 patent, but has never visited Google’s facilities in California in connection with licensing the
18 ‘672 patent. [Leshin Decl. ¶ 5.] These communications, however, are directly related to CLI
19 notifying Google of Google’s infringement of the ’672 patent. Alone, these communications simply
20 are not a sufficient basis for this Court to exercise personal jurisdiction over CLI. See, e.g., Oacis
21 Health Care Systs., Inc. v. Allcare Health Mgmt. Systs., C-99-5112, 2000 WL 550040, at *3 (N.D.
22 Cal. Apr. 25, 2000) (declining to exercise personal jurisdiction over defendant patentee when
23 contacts with forum included various infringement notification letters and a brief visit to plaintiff’s
24 facilities in forum, even though “they go slightly beyond merely notifying potential infringers”). To
25 demonstrate sufficient contacts for the Court to exercise specific personal jurisdiction over CLI,
26 Google must be able to allege more forum-related activity by CLI, such as granting exclusive
27 licenses that create a continuing obligation by the patentee. See, e.g., Akro Corp. v. Luker, 45 F.3d
28 13 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143
1 1541, 1549 (Fed. Cir. 1995) (emphasis added) (holding exercise of personal jurisdiction acceptable,
2 in part, because exclusive license created continuing obligations on behalf of patentee).
3 Google cannot state such facts, and has not, because CLI has not undertaken sufficient
4 activities to give rise to specific personal jur isdiction. CLI has (1) unsuccessfully attempted to
5 negotiate licensing agreements with California residents Google and Sun Microsystems, Inc. 5 , and
6 (2) negotiated (after issuance of the ’672 patent) with additional California residents, which resulted
7 in seven non-exclusive licenses to practice the ’672 patent; these licenses do not create or require
8 active involvement with the licensees or continuing obligations on behalf of CLI. [Leshin Decl. ¶¶
9 9, 10.] Courts have found such activities insufficient for maintaining personal jurisdiction over a
10 party. See, e.g., Hildebrand v. Steck Mfg. Co., 279 F.3d 1351, 1355 (Fed. Cir. 2002); Red Wing,
11 148 F.3d at 1362; Oacis, 2000 WL 550040, at *2.
12 In Red Wing, the Federal Circuit held that exercising personal jurisdiction over the
13 defendant patentee who had granted multiple non-exclusive licenses was improper because (1) the
14 licenses did not require the defendant to defend or pursue infringement actions involving the patent-
15 in-suit, (2) the licenses did not require the defendant to be actively involved with the licensees, and
16 (3) the licensees were not residents of the forum state. Red Wing, 148 F.3d at 1362.
17 Similarly, in Hildebrand, the Federal Circuit denied personal jurisdiction over the defendant
18 patentee. The Court reasoned that the defendant’s warning letters coupled with offers to negotiate
19 were not sufficient to allow personal jurisdiction because the negotiations did not result in a binding
20 licensing agreement or create any other obligation on behalf of the defendant. Hildebrand, 279
21 F.3d at 1355.
22 Further, in Oacis, this court held that exercising personal jurisdiction over a defendant
23 patentee would be unfair when the defendant was based in Texas with no business, offices,
24 facilities, real estate, bank accounts, telephone number or postal address in California, and whose
25 only contacts with California were four infringement warning letters and a brief visit. Oacis, 2000
26 5
CLI named Sun Microsystems, Inc. (“Sun”) as a defendant in the Google Texas Case along with Google. Like
27 Google, Sun has filed a declaratory judgment action in this District. Sun, however, has not named Forgent and GI as
defendants.
28 14 Case No. C04 03934 CW
CHICAGO 296552v1 22768-00143
1 WL 550040, at *2. The court found that these contacts did not rise to the appropriate level
2 necessary to establish personal jurisdiction, even though they went beyond merely notifying
3 potential infringers. Id.
4 As in each of these cases, CLI’s contacts with California are not sufficient for this Court to
5 properly exercise personal jurisdiction over CLI. Indeed, CLI does not have the type of contacts
6 with this district that courts have found sufficient. See, e.g., Akro, 45 F.3d at 1546; Inamed, 249
7 F.3d at 1361-62; Deprenyl, 297 F.3d at 1352; Elecs. For Imaging, 340 F.3d at 1351.
8 Unlike the defendant patentee in Akro, for instance, CLI and Forgent have not entered into
9 or granted an exclusive license with a resident of the forum state. See Akro, 45 F.3d at 1546.
10 There, the court found that the exclusive nature of the license created continuing obligations for the
11 patentee by requiring it to defend and pursue any infringement against the patent, and such a
12 relationship created sufficient contact with the forum to permit the exercise of personal jurisdiction.
13 Id.
14 Similarly, unlike the defendant patentee in Deprenyl, CLI did not negotiate an agreement
15 with Google prior to issuance of the patent in question that created continuing obligations for CLI.
16 See Deprenyl, 297 F.3d at 1352. There, the Federal Circuit found the parties had entered into an
17 ongoing license agreement, which required the defendant patentee to send the plaintiff copies of all
18 correspondence with the patent office and to keep the plaintiff appraised of the prosecution status of
19 the subject application. Id. The court found such activities to be at least as significant as those of
20 the defendant in Akro, and thus held that the defendant had sufficient minimum contacts with the
21 forum for personal jurisdiction to be proper. Id.
22 Moreover, unlike the defendant patentee in Inamed, CLI has not negotiated multiple license
23 agreements with Google, nor has it negotiated any exclusive licenses. See Inamed, 249 F.3d at
24 1361-62. There, the Federal Circuit held that while the defendant patentee’s infringement letter and
25 later negotiations with the plaintiff alone were not sufficient to establish minimum contacts with the
26 forum, the fact that the negotiations culminated in multiple license agreements with the plaintiff was
27 sufficient to submit the defendant to personal jurisdiction. Id.
28 15 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143
1 Finally, CLI has not engaged in the types of activities found sufficient for an exercise of
2 personal jurisdiction in Electronics For Imaging. There, in beginning its analysis of whether the
3 defendant patentee had purposefully availed itself of the forum, the Federal Circuit noted that “other
4 activities distinct from threats of infringement are required for a patentee to be subject to person
5 jurisdiction.” Elecs. For Imaging, 340 F.3d at 1351. The court then listed the defendant’s “other
6 activities” that created sufficient minimum contacts: (1) hiring an attorney in the forum state, who
7 intermittently reported to the plaintiff on the progress of defendant’s pending patent application;
8 (2) telephoning plaintiff regarding the subject matter of defendant’s patent application (prior to
9 issue); and (3) two representatives of defendant visiting plaintiff’s facilities in the forum state to
10 demonstrate the technology underlying what later issued as the patent- in-suit. Id. The court found
11 that since these activities were not random, fortuitous, or attenuated, it was proper to exercise
12 personal jurisdiction over the defendant. Id.
13 CLI’s activities differ significantly from the activities found sufficient for personal
14 jurisdiction in the cases addressed above. Indeed:
15 • CLI’s contacts with this forum solely relate to allegations of infringement and
subsequent license negotiations;
16
• The licenses negotiated and granted by CLI are not exclusive;
17
• The licenses negotiated and granted by CLI neither require active involvement by
18 CLI with the licensees, nor create continuing obligations for CLI, such as requiring
CLI to defend and pursue any infringement of the ’672 patent under the licenses; and
19
• CLI did not initiate contact with potential licensees before the ’672 patent issued.
20
As such, CLI and Forgent’s activities are not sufficient to establish minimum contacts. This
21
Court should properly refuse to exercise personal jurisdiction over CLI and Forgent.
22
ii. An Exercise of Personal Jurisdiction Over CLI Would Violate
23 Standards of Fair Play and Substantial Justice.
24
Even if Google could establish that CLI has sufficient minimum contacts with this district,
25
exercising personal jurisdiction would violate due process as it would be manifestly unreasonable.
26
Once shown that there are sufficient minimum contacts to satisfy due process, a court must next
27
look at whether maintaining jurisdiction would be reasonable. In determining reasonableness, the
28 16 DEFENDANTS’ NOTICE OF MOTION ANDCase No. C04 03934 CW
MOTION TO DISMISS
CHICAGO 296552v1 22768-00143
1 court must look to five factors: (1) the burden on the defendant, (2) the interest of the forum state,
2 (3) the plaintiff’s interest in obtaining relief, (4) the interstate judicial system’s interest in obtaining
3 the most efficient resolution of controversies, and (5) the shared interest of the several states in
4 furthering fundamental substantive social policies. Inamed, 249 F.3d at 1363 (citing Asahi Metal
5 Indus. Co. v. Super. Ct. of Cal., 480 U.S. 102, 113 (1987).
6 In the present case, at least two of the above factors weigh heavily against personal
7 jurisdiction (factors one and four), two are at best neutral (factors three and five), and one at best
8 may favor an exercise of personal jurisdiction (factor two).
9 Under factors one and four, maintaining this litigation in this district would significantly
10 burden CLI. CLI’s principal place of business is in Austin, Texas. CLI’s only contacts with this
11 district relate to notifying infringers of the ’672 patent of their infringement of that patent,
12 presenting CLI’s infringement case, and negotiating non-exclusive license agreements under the
13 ’672 patent. Moreover, as more fully set forth below, three lawsuits alleging infringement of the
14 ’672 patent, whose trial date has been set and in which discovery has been ordered to continue, are
15 presently pending in the Eastern District of Texas. These cases involve a total of 40 defendants,
16 including Google, as well as the same, single patent and same issues as here.
17 Moreover, under factor four, requiring CLI to litigate against Google in this district, while
18 infringement, validity, and enforceability of the ’672 patent are litigated against 40 defendants
19 (including Google) in the Eastern District Texas, will not advance efficiencies in the resolution of
20 the controversy at issue. On the contrary, it will create significant inefficiencies. Allowing the
21 present case to proceed in this Court will require a second Judge to become familiar with the
22 technology involved in the ’672 patent, will result in nearly identical lawsuits proceeding at
23 potentially different speeds 6 in separate federal districts, and will require CLI, Google, common
24 witnesses, and common experts among the cases to duplicate their efforts in Texas and California.
25 Such a process will unnecessarily create a risk of conflicting rulings as well.
26
6
Indeed, as noted above, discovery is already underway in Texas cases and Judge Folsom has already set a trial
27 date of October, 2005, for each of the Texas actions.
28 17 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143
1 Factor two potentially weighs in favor of personal jurisdiction, as California admittedly has
2 an interest in protecting its residents from claims of patent infringement. However, to the extent
3 this is the case, factor five mitigates any impact it might have on the analysis here. Federal patent
4 laws govern this dispute, and each of the several states, including both Texas and California, share
5 the common interest of furthering such a fundamental social policy as avoiding infringement of
6 United States patents.
7 Finally, with respect to factor three, while Google no doubt has an interest in protecting
8 itself from claims of patent infringement, this interest will not be undermined by dismissing the
9 instant case. Google is a defendant in the Third Texas Case, and thus has already been afforded a
10 forum in which to litigate any and all issues regarding the ’672 patent, including its infringement of
11 that patent.
12 IV. CONCLUSION
13
Defendants CLI, Forgent, and GI request that the Court dis miss the instant complaint or
14
transfer this action to the Eastern District of Texas. Neither GI nor Forgent has a sufficient stake in
15
the outcome of this action to remain a party. Forgent has never had an ownership interest in the
16
’672; therefore, no actual controversy exists between Google and Forgent. Similarly, GI has
17
assigned all rights in the ’672 patent to CLI, thereby eliminating any potential “actual controversy”
18
that may have existed between Google and GI. Accordingly, Google’s complaint agains t GI and
19
Forgent under the Declaratory Judgment Act cannot proceed.
20
Moreover, three suits are presently pending in the Eastern District of Texas. All of these
21
suits involve the same subject matter as here, and the Google Texas Case involves the same parties
22
as here. All of these suits involve products sold by Google and other defendants, all of which
23
infringe the ’672 patent because they all implement the baseline JPEG standard. Two of those suits
24
were filed over four months before Google filed the ins tant Complaint, and the third suit was filed
25
well over one month before Google filed this Complaint. Accordingly, at worst, CLI’s Third Texas
26
case is the first-filed case under the first to file rule and should take precedence over the present
27
case.
28 18 Case No. C04 03934 CW
CHICAGO 296552v1 22768-00143
1 Notwithstanding the first- filed rule, the instant dispute may not proceed in this district for
2 lack of personal jurisdiction. Google’s complaint is defective in that Google has failed to address in
3 any recognizable fashion the issue of personal jurisdiction and the alleged bases on which the Court
4 may exercise personal jurisdiction over the Defendants. Even if it had attempted to satisfy its
5 burden in this regard, there exist no sufficient grounds for this Court to exercise personal
6 jurisdiction over the sole owner of the patent- in-suit, CLI. As such, the pleading is deficient and
7 without sufficient basis and should be dismissed.
9
Dated: October 12, 2004 By:_____________________________________
10 Shelley K. Wessels
11 Counsel for Defendants Compression Labs,

Inc., Forgent Networks, Inc. and General
12 Instrument Corporation
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28 19 Case No. C04 03934 CW

CHICAGO 296552v1 22768-00143

Google Inc. v. Compression Labs Inc Et Al - Document No. 8

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Google Inc. v. Compression Labs Inc et al Doc.

1 Shelley K. Wessels (#152394)

4 Stephen G. Rudisill (of counsel)

12 UNITED STATES DISTRICT COURT

13 NORTHERN DISTRICT OF CALIFORNIA

16 GOOGLE, INC., a Delaware Corporation, Case No. C04 03934 CW

17 Plaintiff, DEFENDANTS’ NOTICE OF MOTION

28 Case No. C04 03934 CW

5 II. STATEMENT OF FACTS ....................................................................................................2

16 a. Google Cannot Demonstrate General Personal Jurisdiction

21 ii. An Exercise of Personal Jurisdiction Over CLI

28 i Case No. C04 03934 CW

3 Aetna Life Ins. Co. v. Haworth,

6 Alltrade, Inc. v. Uniweld Prods., Inc.,

9 Beverly Hills Fan Co. v. Royal Sovereign Corp.,

12 Cardinal Chem. Co. v. Morton Int’l, Inc.,

15 Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found.,

18 EMC Corp. v. Norand Corp.,

26 Hildebrand v. Steck Mfg. Co.,

28 ii Case No. C04 03934 CW

1 Inamed Corp. v. Kuzmak ,

4 Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co.,

7 Oacis Health Care Systs., Inc. v. Allcare Health Mgmt. Systs.,

10 Paxonet Communications., Inc. v. Transwitch Corp.,

16 Red Wing Shoe Co. v. Hockerson-Halberstadt,

19 Spectronics Corp. v. H.B. Fuller Co.,

22 The Procter & Gamble Co. v. Kimberly Clark Corp.,

26 CAL. CIV. CODE § 410.10..................................................................................................................13

28 iii Case No. C04 03934 CW

2 Fed. R. Civ. P. 4(e) ...........................................................................................................................13

28 iv Case No. C04 03934 CW

1 NOTICE OF MOTION AND MOTION

8 November 19, 2004, or on such date as the Court sets.

18 sufficient activity to establish such jurisdiction.

28 1 Case No. C04 03934 CW

16 case to the Eastern District of Texas.

21 instant Complaint should be dismissed.

22 II. STATEMENT OF FAC TS

5 business at 101 Tournament Drive, Horsham, Pennsylvania.

22 indispensable party, GI.

28 3 Case No. C04 03934 CW

11 any suits arising from the ’672 Patent.

13 A. There Is No Actual Controversy Between Google and GI or Forgent Because Neither

16 because there is no actual controversy between Google and either GI or Forgent.

25 controversy” requirement precludes a declaration regarding the validity or enforceability of claims

28 4 Case No. C04 03934 CW

7 extinguished when patent holder alleviated controversy by abandoning allegation of infringement

28 5 Case No. C04 03934 CW

4 the controversy to require that it remain a party).

17 reasonable apprehension of suit.

22 involving GI was eliminated. GI should be dismissed from this case.

28 6 Case No. C04 03934 CW

4 B. The First-To-File Rule Requires That This Action Be Dismissed or Transferred in

28 7 Case No. C04 03934 CW

5 judicial efficiency and run a significant risk of conflicting judgments.”).

10 September 17, 2004, over one month later.

22 may not divest the first-filed court of jurisdiction. 4

12 C. Defendants Are Not Subject to Personal Jurisdiction in this District.

28 10 Case No. C04 03934 CW

10 deficient and should for this reason alone be dismissed.

11 2. There Exists No Sufficient Basis for Personal Jurisdiction Over CLI.

18 (Fed. Cir. 2002).

27 U.S. 310, 316 (1945).