Exhibit 24

Case 2:24-cv-00093-JRG Document 107-2 Filed 11/22/24 Page 1 of 40 PageID #:

5693
No. 24-140

UNITED STATES COURT OF APPEALS 

FOR THE FEDERAL CIRCUIT

IN RE SONY INTERACTIVE ENTERTAINMENT INC.,

Petitioner.

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas, 

No. 2:22-cv-00424-JRG, Judge Rodney Gilstrap

RESONANT SYSTEMS, INC.’S RESPONSE TO

SONY INTERACTIVE ENTERTAINMENT INC.’S

PETITION FOR WRIT OF MANDAMUS

August 30, 2024

Reza Mirzaie

rmirzaie@raklaw.com

Qi (Peter) Tong

ptong@raklaw.com

Shani Williams

swilliams@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Boulevard, 12th Floor

Los Angeles, CA 90025

310) 826-7474

Counsel for Respondent 

Resonant Systems, Inc.

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5694
FORM 9. Certificate of Interest Form 9 (p. 1) 

March 2023

UNITED STATES COURT OF APPEALS 

FOR THE FEDERAL CIRCUIT

CERTIFICATE OF INTEREST

Case Number

Short Case Caption

Filing Party/Entity

Instructions:

1. Complete each section of the form and select none or N/A if appropriate.

2. Please enter only one item per box; attach additional pages as needed, and

check the box to indicate such pages are attached.

3. In answering Sections 2 and 3, be specific as to which represented entities

the answers apply; lack of specificity may result in non-compliance.

4. Please do not duplicate entries within Section 5.

5. Counsel must file an amended Certificate of Interest within seven days after

any information on this form changes. Fed. Cir. R. 47.4(c).

I certify the following information and any attached sheets are accurate and 

complete to the best of my knowledge. 

Date: _________________ Signature: 

Name: 

2024-140 In re: Sony Group Corporation Respondent, Resonant Systems, Inc. /s/ Qi (Peter) Tong Qi (Peter) Tong 8/30/24

i

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5695
FORM 9. Certificate of Interest Form 9 (p. 2) 

March 2023

1. Represented

Entities.

Fed. Cir. R. 47.4(a)(1).

2. Real Party in

Interest.

Fed. Cir. R. 47.4(a)(2).

3. Parent Corporations

and Stockholders.

Fed. Cir. R. 47.4(a)(3).

Provide the full names of 

all entities represented by 

undersigned counsel in 

this case. 

Provide the full names of 

all real parties in interest 

for the entities. Do not list 

the real parties if they are 

the same as the entities. 

Provide the full names of 

all parent corporations for 

the entities and all 

publicly held companies 

that own 10% or more 

stock in the entities. 

☐ None/Not Applicable ☐ None/Not Applicable

☐ Additional pages attached

Resonant Systems, Inc.

✔ ✔

ii

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5696
FORM 9. Certificate of Interest Form 9 (p. 3) 

March 2023

4. Legal Representatives. List all law firms, partners, and associates that (a)

appeared for the entities in the originating court or agency or (b) are expected to

appear in this court for the entities. Do not include those who have already entered

an appearance in this court. Fed. Cir. R. 47.4(a)(4).

☐ None/Not Applicable ☐ Additional pages attached

5. Related Cases. Other than the originating case(s) for this case, are there

related or prior cases that meet the criteria under Fed. Cir. R. 47.5(a)?

☐ Yes (file separate notice; see below) ☐ No ☐ N/A (amicus/movant)

If yes, concurrently file a separate Notice of Related Case Information that complies 

with Fed. Cir. R. 47.5(b). Please do not duplicate information. This separate 

Notice must only be filed with the first Certificate of Interest or, subsequently, if 

information changes during the pendency of the appeal. Fed. Cir. R. 47.5(b). 

6. Organizational Victims and Bankruptcy Cases. Provide any information

required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)

and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).

☐ None/Not Applicable ☐ Additional pages attached

 Kristopher Davis 

 Russ August & Kabat

 Paul Kroeger 

 Russ August & Kabat

 Jacob Buczko 

 Russ August & Kabat

Neil Rubin 

 Russ August & Kabat

 Christian Conkle 

 Russ August & Kabat ✔

✔

iii

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iv

TABLE OF CONTENTS

CERTIFICATE OF INTEREST................................................................................ i

TABLE OF AUTHORITIES................................................................................... vi

INTRODUCTION .................................................................................................... 1

BACKGROUND ...................................................................................................... 3

I. Resonant Files a Patent Infringement Complaint Against Two Sony 

Entities Based in Japan Regarding Products that Were Designed and 

Developed in Japan......................................................................................... 3

II. Sony Failed to Predict Which Witnesses Will Materialize at Trial................ 4

III. Resonant Opposes the Relevance and Convenience of NDCA...................... 7

IV. The District Court Weighed the Relevant Public and Private Interest 

Factors and Denied Sony’s Transfer Motion and Subsequent Motion 

for Reconsideration ........................................................................................ 8

V. Sony Repeatedly Delays Filing Transfer-Related Motions.......................... 12

LEGAL STANDARDS .......................................................................................... 12

I. Legal Standard for Mandamus Relief........................................................... 12

II. Applicable Law and Conflict of Law ........................................................... 14

III. Recently Updated Fifth Circuit Transfer Law.............................................. 14

A. Elevated Burden of Proof................................................................... 14

B. Court Congestion Matters, Even for Non-Competitors ..................... 15

REASONS FOR DENYING THE PETITION ...................................................... 16

I. Sony Has No Evidence Showing that the District Court’s Corrected 

Analysis of Sony’s Delay is Factually Erroneous........................................ 16

II. The District Court Reasonably Determined that the Practical Problems 

Factor Weighs Against Transfer................................................................... 19

III. Sony Failed to Prove that More Willing Witnesses Will Materialize at 

Trial to Significantly Improve Convenience ................................................ 22

IV. None of the Third-Party Witnesses Will Materialize at Trial, So the 

Compulsory Service Factor Should Be Neutral. .......................................... 24

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V. The District Court Erred in Favor of Sony by Failing to Require The 

Evidentiary Convenience Factor to Result in Significant Convenience 

Gains............................................................................................................. 25

VI. The District Court Erred in Sony’s Favor By Finding the Court 

Congestion Factor Neutral............................................................................ 26

VII. The Correct Weighing of Factors................................................................. 27

VIII. The Writ Is Inappropriate Under the Circumstances.................................... 28

CONCLUSION....................................................................................................... 30

CERTIFICATE OF COMPLIANCE........................................................................ 1

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TABLE OF AUTHORITIES

Cases

Cheney v. U.S. Dist. Ct. for D.C.,

542 U.S. 367 (2004)............................................................................................ 14

CPC Pat. Techs. PTY Ltd. v. Apple Inc.,

143 S. Ct. 206 (2022).......................................................................................... 22

In re Apple Inc.,

52 F.4th 1360 (Fed. Cir. 2022) ........................................................................... 29

In re Apple Inc.,

818 F. App’x 1001 (Fed. Cir. 2020) ............................................................. 13, 14

In re Apple Inc.,

No. 2022-128, 2022 WL 1196768 (Fed. Cir. Apr. 22, 2022)............................. 22

In re Apple Inc.,

No. 2024-129 (Fed. Cir. Aug. 21, 2024) .......................................................... 2, 8

In re Apple,

979 F.3d 1332 (Fed. Cir. 2020) .......................................................................... 22

In re Chamber of Com. of United States of Am.,

105 F.4th 297 (5th Cir. 2024) ...................................................................... passim

In re Clarke,

94 F.4th 502 (5th Cir. 2024) ........................................................................ passim

In re DISH Network L.L.C.,

No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021) ............................. 21

In re EMC Corp.,

677 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 14

In re Genentech,

566 F.3d 1338 (Fed. Cir. 2009) .......................................................................... 13

In re Google LLC,

823 F. App’x 982 (Fed. Cir. 2020) .............................................................. passim

In re Honeywell Int’l Inc.,

No. 2023-152, 2024 WL 302397 (Fed. Cir. Jan. 26, 2024)................................ 21

In re Samsung Elecs. Co., Ltd.,

No. 2023-146, 2023 WL 8642711 (Fed. Cir. Dec. 14, 2023)............................. 21

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vii

In re Sand Revolution LLC,

823 F. App’x 983 (Fed. Cir. 2020) ..................................................................... 12

In re SK hynix Inc.,

No. 2021-114, 2021 WL 733390 (Fed. Cir. 2021) ............................................. 13

In re TikTok, Inc.,

85 F.4th 352 (5th Cir. 2023) ............................................................................... 22

In re True Chem. Sols., LLC,

841 F. App’x 240 (Fed. Cir. 2021) ..................................................................... 13

In re Vistaprint Ltd.,

628 F.3d 1342 (Fed. Cir. 2010) ................................................................ 2, 13, 20

In re Volkswagen of Am., Inc.,

566 F.3d 1349 (Fed. Cir. 2009) .......................................................................... 20

Panduit Corp. v. All States Plastic Mfg. Co.,

744 F.2d 1564 (Fed. Cir. 1984) .......................................................................... 14

Resonant Systems, Inc. v. Samsung Electronics, Co. Ltd.,

No. 2:22-cv-00423-JRG ....................................................................................... 8

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CONFIDENTIAL MATERIAL OMITTED

SAppx32-33 omits the full name of two employees, using only their initials. 

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INTRODUCTION

The “Sony” petitioners (Sony Group Corporation and Sony Interactive 

Entertainment, Inc.) do not deserve the extraordinary relief of a writ of mandamus. 

Sony brought its transfer motion exceptionally late—over nine months after the case 

was filed—despite caselaw requiring that such motions be filed early so that transfer 

motions can take top priority. Now, Sony filed its mandamus petition exceptionally 

late on August 8, 2024—just four months before trial starts on December 9, 2024.

Sony’s petition attempts to manufacture errors of fact: the dates of Sony’s 

knowledge of the complaint, formal service of the complaint, and the extent of

Sony’s delay thereafter. On reconsideration, the district court corrected its original 

mistake about the date of formal service. Appx18. The district court was “not 

persuaded that Defendants did not have pre-service knowledge of the lawsuit. 

Interestingly, Defendants never contend that they had no pre-service notice of this 

case on its filing. If such were true, they surely would have said so.” Appx19. There 

is no evidence in the record to contradict or dispute this factual finding by the district 

court, much less sufficient evidence to warrant reversing a factual finding on 

mandamus. A finding of pre-service knowledge in view of the “typical practice 

regarding foreign defendants” and in view of the deafening silence of Sony’s failure 

to deny pre-service knowledge is precisely the type of factual finding properly made 

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by a district court that should not be disturbed by an appellate court. Id.; In re Apple 

Inc., No. 2024-129, 2024 WL 3886316, at *2 (Fed. Cir. Aug. 21, 2024) (citing In re 

Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010)).

If the district court made any error due to a conflict of Fifth Circuit and Federal 

Circuit law, the district court erred in favor of Sony by applying a lower burden of 

proof. Under the recently heightened burden of proof, Sony’s motion to transfer 

needed to prove “that its evidence makes it plainly obvious—i.e., clearly 

demonstrated—that those marginal gains will actually materialize in the transferee 

venue.” In re Clarke, 94 F.4th 502, 508 (5th Cir. 2024). Sony’s original motion to 

transfer relied on speculative, cherry-picked witnesses and evidence. Now that the 

case has progressed to the expert report and final pre-trial stages, the predictions of 

evidence and witness convenience in Sony’s motion to transfer failed to materialize. 

With such failures of fact, Sony cannot show that its “right to issuance of the writ is 

‘clear and indisputable.’” In re Google LLC, 823 F. App’x 982, 983 (Fed. Cir. 2020).

The district court also erred in Sony’s favor by finding that the time-to-trial 

factor does not matter unless the entities had competitor status, noting that the 

Federal Circuit’s precedent was “odd” but binding. Appx13–14. On reconsideration, 

the district court did not address Resonant’s notice of supplemental authority, which 

explained that binding Fifth Circuit authority permits the district court to weigh this 

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factor against transfer even in the absence of a “special circumstance” such as 

competitor status, albeit not as heavily as it otherwise would have in the presence of 

the special circumstance. SAppx1–2 (citing In re Chamber of Com. of United States 

of Am., 105 F.4th 297, 310 (5th Cir. 2024)). 

In summary, Sony’s petition should be denied because it 1) lacks an 

evidentiary basis to challenge a factual finding about the date of Sony’s knowledge 

and the extent of delay thereafter, 2) relies on Sony’s erroneous predictions of 

evidence and witnesses that will not materialize at trial, and 3) ignores greater legal 

errors that the district court made in Sony’s favor. The district court acted well within 

its discretion to deny transfer, and Sony cannot show a clear and indisputable right 

to mandamus relief due to the numerous errors of fact in its original transfer motion.

BACKGROUND

I. Resonant Files a Patent Infringement Complaint Against Two Sony 

Entities Based in Japan Regarding Products that Were Designed and 

Developed in Japan

On October 26, 2022, Resonant filed the complaint against Sony Group 

Corporation (“SGC”) and Sony Interactive Entertainment, Inc. (“SIEI”) 

(collectively, “Sony”) alleging infringement of U.S. patents that generally relate to 

haptic vibration technology. Appx29. The accused products include various Sony 

PlayStation controllers. Id.

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Resonant is based in Washington and run by Robin Elenga, co-inventor of the 

asserted patents. Appx30. Resonant does not have any offices, employees, or other 

ties to California. 

Both Sony defendants are Japanese entities and have their principal places of 

business in Tokyo. Id. Neither entity has offices in California. Further, the design 

and development of the accused products took place in Japan, and the accused 

products and components are primarily manufactured in China and Japan. Appx572 

(citing Appx597 at 14:24–15:19, Appx599 at 22:7–16, 24:11–25:8, Appx600 at

28:3–23, Appx601–603 at 31:15–38:9, Appx606–607 at 53:18–55:5). 

II. Sony Failed to Predict Which Witnesses Will Materialize at Trial

Sony’s August 8, 2023 motion to transfer made inaccurate predictions at an 

early stage of the case. Sony’s motion argued that the following people will testify

at trial: Aaron Wong, Cody Morales, Daisuke Ishida, Douglas Evans, Jacob Villa, 

Nick Brown, Daniel Kutz, Muneki Shimada, R.W.,

1 T.I., Y.I., John Houston, Julie 

Romanosky, Lisa Mauney, Lisa Mauney, Brian Pepin, Robin Elenga, and Glen 

Tompkins. Appx252–258. Additionally, Sony’s motion identified 13 non-party prior 

artists listed on patents and publications: Joseph Sahyoun, Nicholas Merz, Andriy 

Pletenetskyy, Ashutosh Shukla, Sawyer Cohen, Yehonatan Perez, Jeffrey Bluen, 

1 Initials used for names designated by Sony as confidential.

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Drew Kallen, Robert Heubel, Louis Rosenberg, Alex Goldenberg, Ramon Alarcon,

and Kollin Tierling. Id. Sony’s transfer motion makes no mention of “Logitech” or 

“Clarisonic.” Id. On reply, Sony further identified Huang and Matsukawa for the 

first time. Appx8–9.

Discovery concluded on July 29, 2024. Appx1667. During fact discovery, the 

only people deposed were: Y.I., T.I., Robin Elenga, Erika Peterson, Aaron Wong, 

and Masahito Asai. SAppx27–33. Lori Waugh was also deposed for venue discovery 

only, not for trial. SAppx34. Sony did not identify or rely on Peterson and Asai in 

its transfer briefing. Appx243–284; Appx1412–1572.

On October 6, 2024, Sony served an expert invalidity report of Dr. Welch, 

who selected only a Logitech iFeel Mouse, a Clarisonic System, and a publication 

by John Houston as prior art for trial.

2 Mr. Houston has not been deposed in this 

case, and no Houston testimony is relied on by Dr. Welch. Other than Houston, an 

electronic search of the Welch Report reveals that none of Sony’s other 13 predicted 

prior artists are named in or relied-upon in Dr. Welch’s report, except that 

Rosenberg, Tierling, and Goldenberg are named (without testimony) in the context 

2 Because the underlying case has significantly progressed but not yet at trial, much 

of the evidence is not yet filed with the district court, and FED. R. APP. P. 10 prevents 

submitting evidence such as expert reports on appeal. Resonant has a FED. R. CIV.

P. 11 basis for statements herein and will readily supply evidence if given leave to 

do so.

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of IPR history—a topic that Dr. Welch cannot testify about at trial. SAppx24 at MIL 

6. The Welch report mentions deposition testimony of Mr. Elenga, T.I., and Y.I.—

the only three witnesses from Sony’s motion to transfer that Resonant believes will 

actually testify live at trial. Dr. Welch is a professor at the University of Central 

Florida, which is closer to Texas than to California.

On June 20, 2024, in exchange for Resonant agreeing not to serve deposition 

notices on Cody Morales, Douglas Evans, Jacob Villa, Nick Brown, Daniel Kutz, 

Russ Williams, Julie Romanosky, and Lisa Mauney, Sony agreed not to call these 

witnesses at trial. 

On August 6, 2024, Resonant served an expert damages report by Dr. Dell

relying on deposition testimony by Mr. Wong, Mr. Asai, and Ms. Peterson, but 

Resonant will call these three individuals by deposition, not live, at trial. Dr. Dell 

resides in the Woodlands, Texas.

In summary, of the 33 witnesses identified by Sony, Sony was wrong about 

30 of them attending trial (90.9% error). Only Mr. Elenga, T.I., and Y.I. are expected 

to appear at trial.3 The others have not been deposed, are not relied upon by experts, 

3 Expert discovery is ongoing. Sony may serve other expert reports, but Sony failed 

to name other experts in its Motion to Transfer and cannot now rely on them to 

retroactively meet its burden of proof. Nisha Mody—an expert not named in Sony’s 

motion to transfer—was deposed on August 29, but no certified transcript is yet 

available.

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or will not be called by agreement of the parties. Two new witnesses, Dr. Dell and 

Dr. Walsh, will travel from Florida and Texas.

III. Resonant Opposes the Relevance and Convenience of NDCA

On November 3, 2023, Resonant timely filed its opposition to Sony’s transfer 

motion, exposing overrepresentations by Sony. Appx560; Appx567–586. Sony 

argued that “testing” of accused PlayStation controllers occurred by third-party Sony 

Interactive Entertainment LLC in the NDCA, and witnesses there will need to testify. 

Appx248, 253. Resonant’s venue deposition exposed that such “testing” related to 

irrelevant “user experience” features, and Resonant argued these witnesses will have 

no role at a trial expected to focus on haptic technology and vibration waveforms. 

Appx8; Appx578 (citing Appx604 at 42:10–15, 43:15–44:7, Appx650 at 49:5–24,

and comparing Appx705–1098 (showing irrelevant “user experience” tests) with

electrical tests and vibration waveforms from infringement contentions in

Appx1138–1150).

Resonant also set forth evidence that Sony’s most relevant witnesses are in 

Japan, and that third party suppliers Microchip, AMD, ARM, or MediaTek from 

Austin or Dallas likely have relevant evidence and witnesses in Texas. Appx576–

583; Appx1404-1405. On August 6, 2024, Dr. Baker served an expert infringement 

report identifying various MediaTek part numbers in his infringement report. A 

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MediaTek witness from Austin or Dallas may be needed to authenticate these parts 

or documents about them at trial, but Microchip, AMD, and ARM witnesses are no 

longer expected.

Resonant’s opposition also set forth evidence and argument showing that 

judicial economy would be best served by keeping the case in EDTX, where 

Resonant has another related case that also concerns two of the same asserted

patents: Resonant Systems, Inc. v. Samsung Electronics, Co. Ltd., No. 2:22-cv00423-JRG (the “Samsung case”).4 Appx583–584. In addition, Resonant set forth 

evidence showing that the time to trial is five months faster in EDTX than NDCA. 

Appx584. Indeed, the jury trial is set for December 9, 2024—less than four months 

away. SAppx18.

IV. The District Court Weighed the Relevant Public and Private Interest 

Factors and Denied Sony’s Transfer Motion and Subsequent Motion for 

Reconsideration

On April 11, 2024, the district court entered a 16-page order denying Sony’s 

transfer motion. Appx1–16. Sony’s primary complaint is the district court’s findings

regarding the timeliness of Sony’s motion. But these findings did not weigh heavily 

4 Resonant also has a related case against Apple in the Western District of Texas: 

Resonant Systems, Inc. v. Apple Inc., No. 7-23-cv-00077-ADA. Apple 

unsuccessfully moved to transfer to the NDCA, and then similarly petitioned this 

Court for a writ of mandamus. This Court denied Apple’s petition, and therefore the 

case will remain in the Western District of Texas. In re Apple Inc., No. 2024-129 

(Fed. Cir. Aug. 21, 2024). Resonant has no cases in California.

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in the district court’s decision. Appx5. The district court correctly noted Fifth and 

Federal Circuit law requires that motions to transfer based on convenience be filed 

with reasonable promptness. Id. The district court then observed that “Defendants 

waited roughly nine months after receiving service to file their motion to transfer,” 

and weighed this “delay in filing the Motion along with the private and public 

interest factors discussed below in determining whether the NDCA is a clearly more 

convenient forum.” Id.

The district court then proceeded to discuss each of the relevant private and 

public interest factors. The only factor where the district court mentioned Sony’s 

delay in moving to transfer was the practical problems that make trial of a case easy, 

expeditious, and inexpensive. Appx12. The district court did not mention Sony’s 

delay under any other factor. Appx5–15.

The district court concluded that three of the transfer factors (relative ease of 

access to sources of proof, the availability of compulsory process to secure the 

attendance of witnesses, and the local interest in having localized interests decided 

at home) weighed only “slightly in favor of transfer,” the practical problems factor 

weighed against transfer, and the remaining factors were neutral. Appx16. Given 

Sony’s failure to meet its burden to show that NDCA is “clearly more convenient” 

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than the EDTX, the district court found there was no good cause to transfer and 

denied Sony’s motion. Id.

On May 2, 2024, Sony filed a motion to reconsider the district court’s order 

denying transfer. Appx1597. The sole basis for the motion for reconsideration was 

the district court’s error in finding that Sony delayed nine months after service of the 

complaint in filing its motion to transfer. Appx1597–1599. Sony argued that it was 

not served until April 28, 2023, and therefore it only delayed three months. 

Resonant opposed the motion for reconsideration, noting that (1) Sony never 

explicitly denied pre-service knowledge of the lawsuit, (2) Sony did not 

affirmatively state when it first learned of the lawsuit, and (3) in any event, Sony 

failed to explain why it needed three months to prepare a motion to transfer. 

Appx1605–1607. Sony failed to provide this information on reply. Appx1624–

1626.

5

On July 9, 2024, the district court denied Sony’s motion for reconsideration. 

Appx17. The opinion began by acknowledging Sony’s correction that formal

service of the complaint was not accomplished until April 28, 2023. Appx18. But 

ultimately, “[h]aving carefully reconsidered the private and public interest factors as 

applied to the totality of the facts in this case and out of an abundance of caution 

5 Sony’s table of contents for Appx Vol. III is inaccurate due to an extraneous 

document added at Appx1610.

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having discounted the delay factor from its analysis, the Court continues to find 

that the NDCA is not a ‘clearly more convenient’ forum for this dispute.” Id.

(emphasis added). The district court explained that “the finding of delay factored 

into its analysis of the fourth private interest factor (‘all other practical problems that 

make trial of a case easy, expeditious, and inexpensive),” and that “Defendants’

delay was not the only component that weighed against transfer within this factor.” 

Id. The district court reiterated its previous finding that “the simultaneous 

adjudication of this case and the co-pending Samsung case, which involves two of 

the same asserted patents, will benefit judicial economy and avoid inconsistent 

determinations.” Appx18–19. Thus, “even after discounting Defendants’ delay from 

the analysis,” the practical problems factor still weighs against transfer. Appx19.

The district court explained why it had “reasonable suspicion that the actual 

delay was much longer than three months,” but noted that “even without a more 

significant delay, this particular factor still weighs against transfer, as noted above.” 

Id. On balance, even after correcting for its factual misstatement about the formal 

service date, the district court found that Sony failed to meet its burden to show that 

the NDCA is clearly more convenient. Appx19–20.

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Neither of the district court’s decisions cite the most recent controlling Fifth 

Circuit authority: In re Clarke, 94 F.4th 502 (5th Cir. 2024) and In re Chamber of 

Com. of United States of Am., 105 F.4th 297 (5th Cir. 2024). Appx1–20. 

V. Sony Repeatedly Delays Filing Transfer-Related Motions

On August 8, 2023—over nine months after the complaint was filed on 

October 26, 2022—Sony filed a motion to transfer to the Northern District of 

California (“NDCA”). Appx21-23. The date of Sony’s earliest knowledge of the 

complaint (and delay thereafter) remains unclear from the record. When moving for 

reconsideration, Sony neither denied pre-service knowledge of the complaint, nor 

did Sony provide a declaration identifying the date of Sony’s earliest knowledge. 

Appx1597–1599.

Sony waited an entire month after the district court’s denial of the motion for 

reconsideration to petition this Court for a writ of mandamus. By the time Sony filed 

its petition, this case was already in the advanced stages, and is quickly proceeding 

to trial, which is set for December 9, 2024. Appx1664.

LEGAL STANDARDS

I. Legal Standard for Mandamus Relief

Mandamus is “reserved for extraordinary situations.” In re Sand Revolution 

LLC, 823 F. App’x 983, 984 (Fed. Cir. 2020). “A party seeking a writ bears the 

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heavy burden of demonstrating to the court that it has no ‘adequate alternative’ 

means to obtain the desired relief, and that the right to issuance of the writ is ‘clear 

and indisputable.’” In re Google LLC, 823 F. App’x at 983.

In the context of a motion to transfer, a petition must show of a “clear abuse 

of discretion that produced a patently erroneous result.” In re Apple Inc., 818 F. 

App’x 1001, 1003 (Fed. Cir. 2020) . When considering transfers under Fifth Circuit 

law, this Court “must deny mandamus unless it is clear ‘that the facts and 

circumstances are without any basis for a judgment of discretion.’” In re SK hynix 

Inc., No. 2021-114, 2021 WL 733390, at *3 (Fed. Cir. 2021);

6 see also In re True 

Chem. Sols., LLC, 841 F. App’x 240, 241 (Fed. Cir. 2021) (Under the “exacting 

standard [of mandamus in the context of a transfer ruling], we must deny mandamus 

unless it is clear ‘that the facts and circumstances are without any basis for a 

judgment of discretion.’”); In re Vistaprint Ltd., 628 F.3d at 1347 (“as long as there 

is plausible support of record” for a district court’s decision to deny transfer, “we 

will not second guess such a determination, even if the convenience factors call for 

a different result”); In re Genentech, 566 F.3d 1338, 1347 (Fed. Cir. 2009)

(mandamus relief should be denied “[i]f the facts and circumstances are rationally 

capable of providing reasons for what the district court has done”). 

6 All quotations cleaned up and emphases added unless otherwise noted.

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But even where the requirements for mandamus relief are met, “the court must 

still be satisfied that the issuance of the writ is appropriate under the circumstances.” 

Google, 823 F. App’x at 983. As emphasized by this Court, mandamus relief should 

be issued “sparingly and only in ‘extraordinary’ circumstances.” Apple, 818 F. 

App’x at 1003; see also Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380 (2004)

(A writ of mandamus is a “drastic and extraordinary remedy reserved for really 

extraordinary causes.”).

II. Applicable Law and Conflict of Law

Fifth Circuit law controls the transfer analysis under § 1404. In re EMC Corp., 

677 F.3d 1351, 1354 (Fed. Cir. 2012) (“transfer motions are governed by regional 

circuit law”). When Federal Circuit decisions conflict with Fifth Circuit law, Fifth 

Circuit law controls. Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 

1575 (Fed. Cir. 1984).

III. Recently Updated Fifth Circuit Transfer Law

A. Elevated Burden of Proof

The Fifth Circuit recently articulated an elevated burden of proof on the 

movant. Transfer is appropriate only if the moving party “clearly establishes good 

cause” by “clearly demonstrating that a transfer is for the convenience of parties and 

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witnesses, in the interest of justice.” In re Clarke, 94 F.4th at 508. “It is the movant’s 

burden—and the movant’s alone—to ‘adduce evidence and arguments.’” Id. at 508.

The Fifth Circuit articulated the burden of proof:

Accordingly, to establish “good cause,” a movant must show (1) that 

the marginal gain in convenience will be significant, and (2) that its 

evidence makes it plainly obvious—i.e., clearly demonstrated—that 

those marginal gains will actually materialize in the transferee venue.

Id. (emphases in original). In other words, a movant cannot meet the burden by 

speculating about witnesses who may appear at trial. The movant must clearly show 

that its witnesses will appear at trial, resulting in significant convenience gain. See 

id. The burden of proof is not met if the movant merely shows that the transferee 

venue “is more likely than not to be more convenient.” Id. 

B. Court Congestion Matters, Even for Non-Competitors

The Fifth Circuit ruled that even when “the rationale for speed is no longer 

present” and “[t]here is no special circumstance,” the court congestion factor still 

receives weight in the transfer analysis, albeit not “more heavily.” In re Chamber of 

Com., 105 F.4th at 310. In other words, the court congestion factor applies even to

non-competitors. This overrules the conflicting case In re Google LLC, 58 F.4th 

1379, 1383 (Fed. Cir. 2023), which ruled that this factor receives no weight for 

lacking “urgency” of resolution absent the special circumstance of “competition in 

the marketplace.” Id. 

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REASONS FOR DENYING THE PETITION

I. Sony Has No Evidence Showing that the District Court’s Corrected 

Analysis of Sony’s Delay is Factually Erroneous

Sony does not dispute the vast majority of the district court’s analysis. Rather, 

Sony attempts to use a minor, later-corrected factual misstatement regarding the date 

of service of the complaint in order to manufacture legal error and overturn the entire 

decision. Sony’s delay in moving to transfer played only a minor role in the district 

court’s decision. The district court later corrected this minor factual error after

Sony’s motion for reconsideration. The district court reweighed the transfer factors 

and still determined that Sony’s motion still fell short. The district court acted well 

within its wide discretion, and this Court should not second guess the district court’s 

weighing of the factors, especially when the record is devoid of evidence of Sony’s 

first date of knowledge of the complaint and the extent of Sony’s actual delay.

The district court’s discussion regarding the “timeliness of the motion” 

comprised less than one page of its 16-page order, most of which was a recitation of 

the relevant law. See Appx5. The delay was only considered under the practical 

problems factor. Appx12. The district court stated: “For the specific reasons 

discussed below (see infra § IV.C.4), Defendants’ delay has necessarily lessened 

any convenience that a transfer to the NDCA could provide.” Appx5 (citing 

Appx12). To erase any doubt upon reconsideration, the district court confirmed that 

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“the finding of delay factored into its analysis of the fourth private interest factor 

(‘all other practical problems that make trial of a case easy, expeditious, and 

inexpensive’).” Appx18. Thus, Sony’s assertion that “the district court’s erroneous 

view of the alleged delay percolated throughout the district court’s analysis” (Pet. at 

17) is simply false. 

Furthermore, to the extent that the district court erred in calculating the length 

of Sony’s delay, it reasonably corrected for this error on reconsideration and 

acknowledged Sony’s correction that “Plaintiff did not accomplish service of the 

Complaint on Defendants until April 28, 2023.” Appx18. The district court expressly 

stated that it “carefully reconsidered the private and public interest factors . . . and 

out of an abundance of caution . . . discounted the delay factor from its analysis.” 

Appx18. The district court then explained that Sony’s “delay was not the only 

component that weighed against transfer” under the practical problems factor, and 

reiterated its prior finding that “the simultaneous adjudication of this case and the 

co-pending Samsung case, which involves two of the same asserted patents, will 

benefit judicial economy and avoid inconsistent determinations.” Appx18–19. The 

district court then concluded that “even after discounting Defendants’ delay from 

the analysis under this factor, this Court still finds that the factor, on balance, weighs 

against transfer.” Appx19.

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Sony argues that the district court “only commented on the fourth private 

interest factor” when reconsidering. Pet. at 18. But this was not error because this is 

the only factor that was affected by the district court’s finding of delay. The district 

court had no need to comment on any of the other factors. 

Sony also takes issue with the district court’s commentary regarding Sony’s 

failure to deny pre-service knowledge of the complaint—knowledge that Sony still 

fails to deny. However, the district court explained that the “typical practice 

regarding foreign defendants involves pre-service communications between 

plaintiff’s counsel and defendant’s domestic subsidiaries and/or its known legal 

counsel as to service of process under the Hague Convention.” Appx19. The district 

court further noted that “[t]he fact that Defendants remained silent in their Motion 

to Reconsider as to pre-service awareness of the lawsuit supports the Court’s 

reasonable suspicion that the actual delay was much longer than three months.” Id.

Such findings of the district court are not an abuse of discretion that compel reversal, 

especially when Sony has no evidence to the contrary. But rather than weigh this 

delay against transfer, the district court found that “even without a more significant 

delay, this particular factor still weighs against transfer.” Id.

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II. The District Court Reasonably Determined that the Practical Problems 

Factor Weighs Against Transfer

The district court’s analysis of the practical problems factor is consistent with 

applicable precedent and decidedly not an abuse of discretion. In its original order 

denying transfer, the district court correctly noted that the co-pending Samsung case 

“involves the same Plaintiff and two of the three Asserted Patents.” Appx12. The 

district court then explained that “[i]f the inter partes review proceedings do not 

dispose of all the issues in the Samsung case, this Court’s simultaneous adjudication 

of both cases will benefit judicial economy and avoid inconsistent determinations.” 

Id. This is because the district court “is familiar with the Asserted Patents and will 

no doubt face overlapping issues between the two cases.” Id. Notably, Sony does not 

dispute these foundational facts.

Instead, Sony argues that the district court committed legal error because (1) 

the existence of a co-pending case by itself cannot prevent transfer and (2) there can 

be no “simultaneous adjudication” because the Samsung case is stayed pending IPR. 

Pet. at 20. This fails.

This Court has made clear that the “existence of multiple lawsuits involving 

the same issues is a paramount consideration when determining whether a transfer 

is in the interest of justice.” In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 

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(Fed. Cir. 2009); see also In re Vistaprint Ltd., 628 F.3d 1342, 1346 nn. 2, 3 (Fed. 

Cir. 2010). This holds true even where there is not a complete overlap in the issues:

Although these cases may not involve precisely the same issues, there 

will be significant overlap and a familiarity with the patents could 

preserve time and resources. Because the district court’s decision is 

based on the rational argument that judicial economy is served by 

having the same district court try the cases involving the same patents, 

mandamus is inappropriate under our precedents.

Volkswagen, 566 F.3d at 1351.

The same reasoning applies here. There is a significant overlap in the issues 

given that the Samsung case involves the same plaintiff and two of the three asserted 

patents, and the district court is already familiar with these patents. Sony does not 

dispute these facts. The district court presided over this case through fact discovery 

and claim construction. Appx21–28. It will soon rule on the dispositive motions and 

Daubert motions that are due on September 10. SAppx18–20. The pretrial 

conference is set for November 4. SAppx19. When Samsung reargues similar issues, 

the district court will already be familiar with the technology, claim construction,

and its own previous decisions. The district court thus reasonably determined that it 

would be more efficient to have one court try both cases instead of transferring one 

case to another court unfamiliar with the issues. 

The Honeywell case cited by Sony does not hold otherwise. In Honeywell, the

Court simply found that judicial economy alone is not enough to defeat transfer 

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where the other factors show that the transferee forum is clearly more convenient. 

In re Honeywell Int’l Inc., No. 2023-152, 2024 WL 302397, at *3 (Fed. Cir. Jan. 26, 

2024); see also In re DISH Network L.L.C., No. 2021-182, 2021 WL 4911981, at *4 

(Fed. Cir. Oct. 21, 2021) (judicial economy considerations insufficient basis to deny 

transfer where “several of the private-interest and public-interest factors strongly 

favor transfer”). But here, none of the transfer factors strongly favor transfer. 

Nothing in the district court’s decision indicates that it gave undue weight to judicial 

economy considerations. 

The absence of a “simultaneous adjudication” of the two cases has no

consequence. When the Samsung case later reaches claim construction, dispositive 

motions, and Daubert motions, the district court will already be familiar with the 

technology, claim construction, and its own previous decisions. None of Sony’s 

cases hold that judicial economy is negated solely because one of the co-pending 

cases is stayed. The Samsung case cited by Sony is distinguishable because one of 

the co-pending cases was transferred to the NDCA. In re Samsung Elecs. Co., Ltd., 

No. 2023-146, 2023 WL 8642711, at *2 (Fed. Cir. Dec. 14, 2023). In contrast, 

Resonant has no pending cases in the NDCA.

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III. Sony Failed to Prove that More Willing Witnesses Will Materialize at

Trial to Significantly Improve Convenience

Under the cost of attendance for willing witnesses factor, the district court 

considered each of the parties’ identified willing witnesses, weighed the relative 

convenience of the two forums for these witnesses, and concluded that on balance, 

this factor is neutral. Appx9–11. 

Sony argues that the district court erred for failing to apply more recent Fifth 

Circuit law. Pet. at 22 (explaining how In re TikTok, Inc., 85 F.4th 352 (5th Cir. 

2023) overruled In re Apple, 979 F.3d 1332, 1342 (Fed. Cir. 2020) cited on Appx11). 

Resonant agrees with Sony that the district court applied outdated, conflicting

Federal Circuit law, and Resonant agrees that In re Apple, 979 F.3d at 1342 is 

overruled by the Fifth Circuit.

7 However, the district court further erred in Sony’s 

favor by failing to hold Sony to the updated, heightened burden of proof articulated 

by In re Clarke, 94 F.4th at 508, requiring “(1) that the marginal gain in convenience 

will be significant, and (2) that its evidence makes it plainly obvious—i.e., clearly 

demonstrated—that those marginal gains will actually materialize in the transferee 

venue.” Collectively, the errors were harmless. 

7 For the same reason, the In re Apple Inc., No. 2022-128, 2022 WL 1196768, at *3 

(Fed. Cir. Apr. 22, 2022) analysis of travelers from Florida (like Dr. Welch) is also 

overruled. Cert. denied sub nom. CPC Pat. Techs. PTY Ltd. v. Apple Inc., 143 S. Ct. 

206 (2022).

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Before applying the Fifth Circuit’s rigid version of the 100-mile rule, Sony 

needed to first prove that “those marginal gains will actually materialize in the 

transferee venue.” In re Clarke, 94 F.4th at 508 (emphasis in original). Sony inflated

the number of NDCA witnesses by counting witnesses who have not been deposed, 

are not relied upon by experts, and/or excluded by agreement such that they will not 

testify at trial. See Section II (pages 4–7) above.8

To the contrary, Dr. Dell from the Woodlands, Texas and Dr. Walsh from 

Florida will both appear live to testify at trial. Applying the strict 100-mile rule, they 

will both find travel to Texas significantly more convenient than to California, and 

they counterbalance any marginal inconvenience of T.I and Y.I from Japan. Dr. 

Baker lives in Las Vegas. His inconvenience to either courthouse will be marginal, 

at best, not significant.9 Mr. Elenga does not find travel to Texas inconvenient 

because of the lower trial cost, so he is a nonfactor. Appx1408–1411.

8 Sony may argue on reply that the Federal Circuit should not consider postcomplaint developments, and Resonant is not automatically entitled to a surreply. 

See Appx1661. The prohibition against considering post-fact developments applies 

to a district court when deciding transfer motions in the first instance, but it does not 

hinder the Federal Circuit’s ability to review whether Sony has a clear and 

indisputable right on a petition for writ of mandamus.

9 The district court has not had an opportunity to make a first instance assessment of 

these corrected witnesses who recently served reports and should be given an 

opportunity to do so before reversal.

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Sony’s right to relief is not “clear and indisputable” when Sony inaccurately 

predicted whether 30 of its 33 witnesses will not materialize at trial, and when Sony 

failed to identify the experts from Florida and Texas who have served expert reports. 

Mandamus relief should not be based on witnesses that Sony has agreed not to call, 

witnesses involved in irrelevant “user experience” tests, or others who are neither 

deposed nor identified in expert reports.

IV. None of the Third-Party Witnesses Will Materialize at Trial, So the 

Compulsory Service Factor Should Be Neutral.

Sony has not deposed any of the third-party prior artists identified in its 

motion to transfer. Appx255–257. Sony is unlikely to call them to trial without first 

deposing them to know what they will say. Sony’s invalidity expert does not rely on 

their testimony. None of them are expected to materialize at trial as required by In 

re Clarke, 94 F.4th at 508. Resonant will not call Mr. Wong, Mr. Asai, or Ms. 

Peterson live at trial, and Mr. Asai and Ms. Peterson were not even identified or 

relied on in Sony’s motion to transfer.

Thus, the district court again legally erred in Sony’s favor by considering the 

convenience of these third-party witnesses, without assessing whether they will 

actually materialize at trial as required by In re Clarke, 94 F.4th at 508. The district 

court neither recited this standard nor cited In re Clarke. Appx1–9. This error of law 

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caused the district court to weigh this factor in Sony’s favor. Appx7–9. Instead, the 

availability of compulsory process factor should be neutral.

V. The District Court Erred in Favor of Sony by Failing to Require The 

Evidentiary Convenience Factor to Result in Significant Convenience 

Gains

Sony does not challenge the district court’s factual findings regarding the ease 

of access to source of proof. The district court found “Defendants do not identify 

any examples of physical documents or evidence that is stored in physical form in 

the NDCA.” Appx7. The district court then found that most documents will come 

from Japan and be produced electronically, so “the Court sees no indication that 

evidence in Japan will be any easier to access if this case is transferred to the 

NDCA.” Id. There was no evidence that will come from Texas sources. Id. The 

district court found this to slightly favor transfer. Id.

Under any logical standard, this factor should have been neutral if electronic 

evidence from Sony’s offices in Japan is equally accessible via the internet from 

both the NDCA and WDTX. Legally, the district court erred by failing to apply the 

two-part analysis required by In re Clarke. The district court did not ask whether (1) 

the marginal gain in convenience will be significant, and (2) whether evidence 

makes it plainly obvious—i.e., clearly demonstrated—that those marginal gains will 

actually materialize in the transferee venue. In re Clarke, 94 F.4th at 508. Rather, 

because “the Court sees no indication that evidence in Japan will be any easier to 

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access if this case is transferred to the NDCA,” part (1) of the In re Clarke test about 

significant convenience gain precludes finding this factor in favor of transfer at all. 

Appx7. The district court was wrong to assume that slightly easier access to evidence 

means this factor weighs slightly in favor of transfer. Without a significant increase 

in convenience, the relative ease of access to sources of proof should have been 

neutral under Fifth Circuit law. The district court erred in favor of Sony.

VI. The District Court Erred in Sony’s Favor By Finding the Court 

Congestion Factor Neutral.

The district court erred in Sony’s favor by finding this factor neutral, despite 

recognizing that the “parties appear to agree that EDTX has a faster median time-totrial,” and after the district court’s own recognition that “[t]his case has been timely 

proceeding to trial . . . counseling against transfer.” Appx13. Indeed, the trial 

scheduled for December 9, 2024 is fast approaching. However, the district court 

explicitly found this factor neutral solely because it was bound by the “odd” Federal 

Circuit requirement from In re Google LLC, 58 F.4th at 1383, which requires present 

“competition” in the market. Appx13 n.162. 

As explained in Legal Standards Section III(B) above (page 15), In re 

Chamber of Com. of United States of Am., 105 F.4th at 310 has overruled In re 

Google LLC, 58 F.4th at 1383. This factor should have weighed against transfer. 

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Resonant notified the district court of this supplemental authority, but the district 

court ignored it. SAppx1–17; Appx17–20.

VII. The Correct Weighing of Factors

The district court should have weighed the factors as follows:

Factor Correct finding

Cost of attendance of 

willing witnesses

Neutral because Sony failed to carry burden of 

proving that witnesses will actually materialize at 

trial as required by In re Clarke, and two new 

witnesses from Florida and Texas will attend trial.

Availability of 

compulsory process to 

secure the attendance of 

witnesses

Neutral because none of the third-party individuals 

identified by Sony will materialize at trial as required 

by In re Clarke.

Relative ease of access to 

evidence

Neutral because Sony failed to prove that any 

evidence will be significantly easier to access from 

the NDCA as required by In re Clarke.

All other practical 

problems that make the 

case easy, expeditious, 

and inexpensive

Materially against transfer due to co-pending 

Samsung case, with or without Sony’s delay in filing 

its motion to transfer, and especially now that the 

Sony trial is near.

Administrative 

difficulties from court 

congestion

Materially against transfer under Chamber of Com.

Local Interest Slightly favors transfer

Familiarity with the law Neutral

Problems with conflicts 

of law

Neutral

When correctly applying Fifth Circuit law, two factors weigh materially against 

transfer, and only the local interest factor slightly favors transfer. If anything, the 

district court erred in Sony’s favor. 

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VIII. The Writ Is Inappropriate Under the Circumstances 

Mandamus is inappropriate under the particular circumstances of this case. 

Sony artificially inflated its witness lists in an attempt to make the NDCA appear to 

be the more relevant venue. Of the 33 witnesses identified in Sony’s motion, 30 of 

them will not appear at trial. Seven SIE witnesses identified by Sony were only 

involved in user experience testing and had no relevant technical knowledge 

regarding the accused products—something Sony never meaningfully disputed in 

the briefs. Of the 13 prior art witnesses identified in Sony’s motion (Appx256), zero

were deposed, making it clear that Sony has no intention of calling them at trial.

Eight witnesses will not be called by agreement. Instead, Sony will call Dr. Welch 

to travel from Florida, which is far closer to Texas, and Resonant will call Dr. Dell 

from Texas and Dr. Baker from Las Vegas. 

To grant mandamus relief here would be to rule that Sony’s erroneous 

inflation of the NDCA count by 30 witnesses with a 90.9% error rate, as well as 

Sony’s omission of expert witness from Texas and Florida, somehow meets the 

burden of clearly demonstrating “that those marginal gains will actually materialize 

in the transferee venue.” In re Clarke, 94 F.4th 508. If anything, the district court 

was misled by Sony’s 30 inaccurate witness predictions to repeatedly err in Sony’s 

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favor.

10 Sony’s false predictions preclude it from arguing that its right to mandamus 

relief is clear and indisputable.

This case is in advanced stages and trial is set for December 9, 2024. 

SAppx18. Fact discovery and claim construction are completed. Appx21–28. Expert 

discovery closes on September 6. SAppx20. Dispositive motions and Daubert 

motions are due on September 10. Id. Pretrial disclosures (witness and exhibit lists 

and deposition designations) are due on September 30. Id. The pretrial conference is 

set for November 4. SAppx19. It simply makes no sense to transfer this case to a 

different court that is unfamiliar with the parties, patents, and technology, at this late 

stage of the case—especially in light of Sony’s weak showing. The trial would 

almost certainly be delayed well beyond the current December trial date. 

Transferring this case to the NDCA would only serve to delay resolution of this case 

and burden another court, at great inconvenience to Dr. Welch and Dr. Dell. 

10 In 2022, the Western District of Texas attempted to curb this type of speculative 

abuse in transfer motions, but the Federal Circuit did not permit the lower court to 

do so, resulting in continued speculation by defendants like Sony and Apple at the 

early stages of patent cases and the ongoing flood of mandamus petitions at the 

Federal Circuit. In re Apple Inc., 52 F.4th 1360, 1362 (Fed. Cir. 2022) (“The district 

court took the view that by delaying the decision until after full fact discovery and 

re-briefing, it could reduce ‘speculation’ and ‘allow the parties to provide the Court 

with the best evidence for ruling on a motion to transfer.’”). Perhaps In re Apple Inc., 

52 F.4th 1360, should be reconsidered.

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CONCLUSION

For the foregoing reasons, the Court should deny Sony’s mandamus petition. 

Should the Court find sufficient error in favor of Sony worthy of vacating the district 

court’s decision, then the Court should remand and instruct the district court to 1) 

apply the correct burden of proof from In re Clarke, 2) apply the correct court 

congestion law from In re Chamber of Commerce, 3) reevaluate the updated witness 

count at this stage of the case, and 4) use updated case information and correct law 

to provide a renewed, first-instance assessment of the balance of transfer factors.

August 30, 2024 /s/ Peter Tong

Reza Mirzaie

rmirzaie@raklaw.com

Qi (Peter) Tong

ptong@raklaw.com

Shani Williams

swilliams@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Boulevard, 12th Floor

Los Angeles, CA 90025

310) 826-7474

Counsel for Respondent 

Resonant Systems, Inc.

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