IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF COLORADO 

Civil Action No.: 11-cv-02519-WYD-MJW 

TELECOMMUNICATION SYSTEMS, INC., 

a Maryland company, 

Plaintiff, 

v.

TRACBEAM, L.L.C.,

a Colorado limited liability company, 

Defendant.

PLAINTIFF TELECOMMUNICATION SYSTEMS, INC.’S 

SURREPLY TO DEFENDANT TRACBEAM, L.L.C.’S 

MOTION TO TRANSFER UNDER 28 U.S.C. 1404(a) 
I. INTRODUCTION .............................................................................................................. 1

II. ARGUMENT ...................................................................................................................... 1

A. TracBeam’s Recent Disclosure of Pending Settlements with Multiple Defendants 

in the Texas Litigation Weighs Against Transfer ................................................... 1

B. TracBeam Misstated Facts Concerning the Location of Operative Witnesses ....... 2

C. TracBeam’s Arguments Regarding the “Customer Suit Exception” are Misleading

................................................................................................................................. 3

D. TracBeam Mischaracterizes the “Advanced” State of the Texas Litigation to 

Make Texas Seem a More Appealing Forum ......................................................... 4

E. TracBeam Continues to Conflate the Arguments Regarding Transfer and 

Consolidation .......................................................................................................... 5

III. CONCLUSION ................................................................................................................... 5
1

Plaintiff TeleCommunication Systems, Inc. (“TCS”), by and through its undersigned 

counsel, submits this Surreply in Opposition to Defendant TracBeam, L.L.C.’s (“TracBeam”) 

Motion to Dismiss Under 28 U.S.C. § 1404(a) (the “Motion”).

I. INTRODUCTION

 TCS respectfully submits that this Surreply is required to address newly developed facts 

which bear directly on, and diminish the impact of, several arguments made by TracBeam in its 

Reply brief. Additionally, and relatedly, this Surreply is necessary to correct the record with 

respect to factual allegations inaccurately laid out by TracBeam in its Reply in Support of its 

Motion to Transfer Under 28 U.S.C. § 1404(a) (“Reply”). Finally, TCS disagrees with 

TracBeam’s characterization of case law it uses in support of its Motion. TCS believes that the 

Court will benefit from an explanation of why the correct application of precedential case law 

favors TCS’ position.

II. ARGUMENT 

A. TracBeam’s Recent Disclosure of Pending Settlements with Multiple 

Defendants in the Texas Litigation Weighs Against Transfer 

TracBeam has relied heavily on the existence of its Texas litigation to argue for transfer 

of this case to Texas. TracBeam justifies its request for transfer by arguing that “this action 

could be consolidated with a more advanced lawsuit.” Reply at 1. However, TracBeam failed to 

mention in both its Motion and Reply that it has reached “agreement in principle” with several 

defendants in the Texas litigation and “settlement in principle” with another.1

 For example, 

TracBeam argues that the presence of the Sprint-Nextel defendants in the Texas case means the 

1 See Dckt. Nos. 101, 109, 115, and 126 in TracBeam, LLC v. AT&T Inc. et al., Civil Action No. 

6:11-cv-96 (E.D. Tex. 2011).
2

facts in this action are closely related to those in the Texas litigation. However, in “agreed” 

motions requesting extensions of time to comply with various discovery obligations, TracBeam 

states that it has reached agreements with eight (8) different Sprint-Nextel defendants as well as 

an agreement with People’s Wireless Services, directly and completely undercutting TracBeam’s 

argument that the presence of the Sprint-Nextel defendants in the Texas case supports transfer. 

With each settlement, the relevance of the Texas litigation decreases. With each dismissal of a 

Texas-based defendant, the case’s connection to Texas weakens, as does TracBeam’s argument 

that transfer is appropriate. 

B. TracBeam Misstated Facts Concerning the Location of Operative Witnesses

In its Reply, TracBeam argues that “TCS focuses on the wrong party.” Reply at 4. 

TracBeam continues to address only the infringement aspects of this case, conspicuously 

ignoring the fact that invalidity is a significant issue in this case (in addition to inventorship, 

estoppel, license, and other defenses that may become available to TCS based on information 

and/or witnesses located in Colorado). With respect to invalidity, everything is located in 

Colorado; nothing is located in Texas. TracBeam has not disputed, nor can it, that it is located in 

Colorado; its headquarters are located mere minutes from this Court; it is the home of one half of 

the alleged inventors of the patents at issue; and it is the forum from which the patents were 

prosecuted. Together, these facts, all conspicuously absent from TracBeam’s reply, make 

Colorado the most convenient and most appropriate forum. See Advanced Dynamics Corp. v. 

Mitech Corp., 729 F. Supp. 519 (N. D. Tex. 1990) (transferring a declaratory judgment action to 

the district where defendants resided, where defendants’ business records and employees were 

located, where defendants’ decisions were made, and where one of the inventors resided); Recton
3

Corp. v. Allsop, Inc., 999 F. Supp. 574, 577 (S.D.N.Y. 1998) (in part, transferring a declaratory 

judgment action involving patent infringement to the location where most of the patents were 

prosecuted). In a declaratory judgment for invalidity, the key witnesses are the inventors. One 

alleged inventor is located in Colorado; none are located in Texas. 

 In an attempt to steer the analysis away from the fact that Colorado is TracBeam’s home 

turf, TracBeam attempts to undercut TCS’ assertions regarding inconvenience to TCS employees 

and witnesses because the individuals are “unnamed.” Reply at 9. TCS has specified that its 

employees and witnesses are in two states within close proximity to Colorado. In addition, the 

cases that TracBeam cites in support of this proposition all find that defendants, rather than 

plaintiffs, seeking transfer must not rely on allegations of inconvenienced unnamed individuals. 

See AmTRAN Tech. Co. v. Funai Elec. Co., Ltd., 2009 U.S. Dist. Lexis 35330, *16 (W.D. Wis., 

April 27, 2009); Gummow v. Superior Ratchet & Tool Co., 96-cv-50213, 1997 U.S. Dist. Lexis 

9566, at *21 (ND. III. June 20, 1997). TracBeam attempts to shift the burden of proof to TCS in 

this regard, despite the clear admission in its own motion that the burden lies on the moving 

party. Motion at 4. It remains undisputed that TCS employees would be more inconvenienced 

by travelling to Texas than to Colorado; TracBeam’s attempts to confuse the issue by applying 

defendant-specific case law to Plaintiff TCS should be ignored.

C. TracBeam’s Arguments Regarding the “Customer Suit Exception” are 

Misleading 

TracBeam attempts to discredit TCS’ arguments about judicial efficiency by discussing 

the inapplicability of the “customer suit exception” – which was never invoked by TCS. Reply 

at 7-8. By discussing the “customer suit exception,” TracBeam attempts to convince the Court to 

ignore the important differences between the Texas litigation and the present action: namely, the 
4

Texas litigation would only address TCS’ technology distributed to a defendant in that case, 

whereas the present case is broader and will address the infringement issues for all applications 

of TCS’ technology. Neither the Texas case nor the instant case would be completely dispositive 

of the other. TracBeam’s attempt to discredit an argument TCS did not make should not sway 

this Court’s judgment. 

D. TracBeam Mischaracterizes the “Advanced” State of the Texas Litigation to 

Make Texas Seem a More Appealing Forum 

TracBeam overstates the allegedly “advanced” state of the nascent Texas litigation. 

Eleven defendants in the Texas litigation have not yet filed answers.2

 The last two defendants in 

Texas to answer, Google, Inc. and Skyhook Wireless, Inc., did so only four months before this 

case was filed. The Texas case has been characterized by delay, much of it caused by or with the 

consent of TracBeam itself. First, TracBeam filed an Amended Complaint, which included new 

defendants, almost three full months after filing its original Complaint, and a mere four months 

before the instant case was filed. Moreover, as discussed above, TracBeam has regularly given 

multiple extensions of time to comply with certain discovery deadlines to those parties with 

whom TracBeam has reached or is close to reaching settlement. As this extension-granting 

practice continues, the allegedly “advanced state” of the Texas litigation disappears, as does the 

applicability of TracBeam’s argument for transfer. 

2 See Dckt. Nos. 72 in TracBeam, LLC v. AT&T Inc. et al., Civil Action No. 6:11-cv-96 (E.D. 

Tex. 2011) wherein the following defendants move to dismiss the complaint for failure to state a 

claim of willful infringement: AT&T Inc., AT&T Mobility, L.L.C, Cellco Partnership d/b/a 

Verizon Wireless, Nextel Communications of the Mid-Atlantic, Inc., Nextel South Corp., Nextel 

West Corp., Nextel of California, Inc., Nextel of New York, Inc., Nextel of Texas, Inc., Sprint 

Nextel Corporation, Sprint Spectrum L.P.. 
5

E. TracBeam Continues to Conflate the Arguments Regarding Transfer and 

Consolidation

In both its Motion and Reply, TracBeam combines its arguments regarding the 

appropriateness of transfer to Texas with those respecting the propriety of consolidation with the 

Texas litigation. Not only does this conflation confuse the issues, it controverts the recentlyenacted patent reform law’s admonition against misjoinder. See 35 U.S.C. § 299(b). 

Specifically, guidance and clarification were given regarding allegations insufficient for joinder: 

“accused infringers may not be joined in one action as defendants or counterclaim defendants, or 

have their actions consolidated for trial, based solely on allegations that they each have infringed 

the patent or patents in suit.” Id. As such, the Texas court, despite TracBeam’s unsupported 

contentions to the contrary, should not join the cases, even if transfer were ordered.

III. CONCLUSION 

For the foregoing reasons, TracBeam’s Motion to Transfer Pursuant to 28 U.S.C. § 

1404(a) should be denied.
6

Dated: January 3, 2012 Respectfully submitted, 

 /s/ Victor M. Morales_________________

Victor M. Morales, #16974 

MCELROY, DEUTSCH, MULVANEY

& CARPENTER, LLP 

5613 DTC Parkway, Suite 1100 

P.O. Box 4467 

Greenwood Village, CO 80155-4467 

Direct: (303) 226-8963 

Telephone: (303) 293-8800 

Fax: (303) 839-0036 

E-mail: vmorales@mdmc-lawco.com 

 and 

/s/ Edward A. Pennington

Edward A. Pennington

Stephanie D. Scruggs 

Sid V. Pandit

MURPHY & KING 

Professional Corporation 

1055 Thomas Jefferson Street, N.W., Suite 400 

Washington, D.C. 20007 

Telephone: (202) 403-2100 

Facsimile: (202) 429-4380 

Email: eap@murphyking.com 

 sds@murphyking.com 

 svp@murphyking.com 

Attorneys for Plaintiff, 

TeleCommunication Systems, Inc.
CERTIFICATE OF SERVICE

I hereby certify that on this 3rd day of January 2011, a true and correct copy of the 

foregoing PLAINTIFF TELECOMMUNICATION SYSTEMS, INC.’S SURREPLY TO 

DEFENDANT TRACBEAM, L.L.C.’S MOTION TO TRANSFER UNDER 28 U.S.C. 

1404(a) was electronically filed with the Clerk of Court and served on the following parties using 

the CM/ECF system:

Gregory S. Dovel 

Jonathan Gottfried 

Dovel & Luner, LLP 

201 Santa Monica Blvd., Suite 600 

Santa Monica, CA 90401 

 s/ Victor M. Morales 

____________________________________

Victor M. Morales, #16974 

McELROY, DEUTSCH, MULVANEY 

 & CARPENTER, LLP 

5613 DTC Parkway, Suite 1100 

P.O. Box 4467 

Greenwood Village, CO 80155-4467 

Direct: (303) 226-8963 

Telephone: (303) 293-8800 

Fax: (303) 839-0036 

E-mail: vmorales@mdmc-lawco.com 

Attorneys for Plaintiff