Apple's Motion to Transfer Action Brought by Core Wireless Denied Where Apple Failed to Identify Specific Witnesses Who Would be Inconvenienced if the Case Were Not Transferred

March 13, 2013

Core Wireless filed an action against Apple that alleged infringement of several patents in the Eastern District of Texas. Apple moved to transfer the case pursuant to 28 U.S.C. §1404(a).

As explained by the court, "Core Wireless is a corporation duly organized and existing under the laws of the Grand Duchy of Luxembourg, with a principal place of business at 16, Avenue paseur L-2310 Luxembourg. . . . Core Wireless maintains a wholly-owned subsidiary, Core Wireless Licensing Ltd. ("Core Wireless USA"), a Texas corporation with a principal place of business at 5700 Granite Parkway, Suite 960, Plano, TX 75024. . . .Core Wireless USA has 6 employees who live in or near Plano, TX, and is Director Jerry Mills lives full time in Dallas, TX. Id. at ¶ 16."

On the other hand, all of Apple's relevant employees and documents were based in Cupertino, California. Neither side identified any specific third party witnesses and the court noted that the named inventors did not reside within the United States.

After setting forth the relevant standard under section 1404(a), the court turned to an analysis of the facts in this case. In reviewing the first factors, the private interest factors, the court found that Apple did not set forth sufficient information to tilt these factors in favor of transfer. "Apple raises the importance of particular baseband processors used to enable cellular communications in the accused products that are developed by Intel and Qualcomm. Buckely Decl. at ¶ 7. The relevant sources related to those baseband processors appear to be largely unknown and/or disputed by the parties. Reply at 2. Apple states only that documents related to the financing and licensing of those processors could be relevant and would be located with Apple in the Cupertino area. Given Apple's vague assertions and seemingly unknown relevance and location of potential sources, the weighing of this factor would be merely speculative. The Court declines to speculate as to the location of sources of proof."

In addition, the court found: "Apple fails to identify a single third party witness and states only that "relevant third party witnesses are located in California." Motion at 10. Essentially, Apple does not identify any individuals who might have relevant information. Id. To the extent there are individuals who might be needed as unwilling third party witnesses, those individuals have not been named and their domiciles have not been established. On these vague grounds, the Court cannot weigh to what degree both the transferee district and the District would have subpoena power over necessary third party witnesses."

With respect to Apple's witnesses, the court also found Apple's showing insufficient. "Again, Apple has failed to identify any willing witnesses and states only that "Apple's likely witnesses are located in the Northern District of California." Motion at 9, Buckley Decl. at ¶4. Apple fails to identify employees with knowledge of the accused systems, the accused system's marketing, or the accused system's financial details. Without naming any persons, their interest in the litigation, and where they reside, the Court can only speculate as to the difficulty and cost of travel. The Court cannot take Apple's generalizations to assume all willing witnesses would be in the Cupertino Area. As it stands, it has been presented that there may be witnesses related to Intel and Qualcomm, and their willingness and location is presently unknown to the Court. While the Court acknowledges that Apple's unknown witness who are claimed to be in the Cupertino area would have to travel to attend trail in this District, it cannot weigh this factor without identification of those individuals."

Thus, Apple's failure to identify particular witnesses and documents doomed its transfer motion. "Because Apple has failed to identify any willing witness who would need to travel, or any third party witness not subject to the compulsory process in this District, the convenience of witnesses could not be evaluated in the Court's analysis. Additionally, Apple could state only generalities as to the relevant documents, and the importance and location of documents from Intel and Qualcomm remain unknown. The local interest of the Northern District of California is not enough to establish it is a clearly more convenient forum on its own. Ultimately, Apple has failed to meet its burden to establish that transfer is clearly more convenient."

Core Wireless Licensing, S.A.R.L. v. Apple, Inc., Case No. 6:12-cv-100 LED-JDL (E.D. Tex. Feb 22, 2013)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.