Almost four months have passed since the Rockstar Consortium's "Halloween lawsuits" against Google and seven Android device makers (six at this point, because Huawei has already settled) over former Nortel patents, and at this stage the focus is still on venue transfer motion practice. Google wants Rockstar's Android OEM cases as well as the search engine case (in which Google is the only defendant) moved out of Texas and over to California. It filed a declaratory judgment action in California shortly before Christmas over the patents asserted against Android OEMs (and against Google itself, actually, which was added as a defendant to the Samsung case) and a motion to transfer venue in the search engine case.
About two weeks ago Samsung brought a motion to dismiss Rockstar's lawsuit, claiming that one of the asserted patents is invalid and, which would have broader implications, that Rockstar subsidiary MobileStar Technologies lacked standing when the suit was filed (because a certain registration with the Texas Secretary of State occurred only a month later). HTC, LG, ASUSTeK and Pantech filed similar motions last week. Meanwhile, ZTE has done so, too, but in addition to the two issues raised by Samsung and the others, it also wants Rockstar's willfulness allegation with respect to the '551 patent tossed. And Google filed a motion consistent with Samsung's in the Rockstar v. Samsung and Google case.
In the search engine case, Rockstar responded last week to Google's motion to transfer that one to Northern California. What's far more interesting than all sorts of detail about factors weighing for or against one venue or the other is that Rockstar, in the context of where the relevant witnesses are based and how Texas-centric its patent licensing business has historically been, names two of its employees -- CEO John Veschi and Mark Hearn -- who met, while they were still employed by Nortel, with Google in 2010 to discuss licensing the patents-in-suit in the search engine case. In the same paragraph, the subjects of willfulness and Google's knowledge of the patents-in-suit come up.
Rockstar had alleged willful infringement in its original complaint against Google, but the complaint itself discussed only Google's failed bid for the Nortel patent portfolio in the willfulness context. The auction was held in 2011. Prior licensing talks weren't mentioned in the complaint.
A declaration attached to Rockstar's opposition to Google's transfer motion by the aforementioned Mark Hearn says the following about the 2010 meeting between Nortel and Google, which is very significant with respect to the allegation of willfulness:
"6. As part of my employment with Nortel, I personally attended a meeting with Google about the patents-in-suit in 2010. That meeting was also attended by Raj Krishnan and John Veschi, among others, who were all part of the intellectual property team at Nortel.
7. At the 2010 discussions with Google, Nortel employees presented claim charts to Google regarding the manner in which Google infringes the patents-in-suit directly and through third parties.
8. The patents-in-suit that had then issued were the only patents where Nortel presented claim charts to Google.
9. Many documents concerning patent monetization regarding the patents-in-suit, including communications with Google about the patents-in-suit and notifications of infringement, have resided in or near the Eastern District of Texas since the time of their creation in the Nortel era."
Google emphasizes an inequitable-conduct defense against those patents. If it proves those patents invalid or unenforceable, or if it at least convinces the court that there was no objective willfulness (because it would have had a reasonable basis for assuming invalidity or unenforceability or non-infringement), then there won't be any willfulness enhancements (up to triple damages) of a damages award. But if those types of defenses fail, Google will have to try to explain away the significance of the 2010 licensing discussions and the infringement claim charts presented to it at the time.
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