Padcom, Inc. v. NetMotion Wireless, Inc. et al.

I'll research this case and verify the details against available sources.

Case overview and background

Parties and what they did. Both sides were venture-backed operating companies in the same narrow market — not trolls, universities, or licensors of last resort. Padcom, Inc. (Bethlehem, Pa.) developed, sold, and serviced mobile-data software and remote access routers, principally its TotalRoam® line (including TotalRoam Mobile Virtual Network), aimed at public safety, utility, and transportation fleets that need to stay connected while moving across dissimilar wireless networks. NetMotion Wireless, Inc. (Seattle) was spun out of WRQ, Inc. in 2001 and sold Mobility, a software-only mobile VPN; by the time of trial it had raised roughly $30 million in venture financing. The second defendant, Database Solutions, Inc. (DSI) of Wilmington, Delaware, was a regional reseller that allegedly offered the accused products in Delaware, Pennsylvania, and New Jersey — its Delaware presence is what anchored the case in this district. Padcom was represented at filing by Neil Greenblum of Greenblum & Bernstein (Reston, Va.). This was a head-to-head competitor dispute: at the time of the settlement merger, a Forrester analyst observed that "[t]he technology was very similar and arguably too similar; hence the lawsuit."

The accused technology and the patents. The accused product was NetMotion Mobility — a client installed on Windows laptops/PDAs plus a Mobility server on a Windows server-class machine — and the case ultimately reached ten incremental versions (3.0, 3.1, 3.5, 4.0, 4.01, 5.0, and others), per the court's post-trial opinion. Padcom asserted three patents from a single 1995/1997 family (inventors Doviak, Whitmore, and Houvig; all asserted claims claiming priority to the September 17, 1997 filing of the '324 patent): US 6,418,324, "Apparatus and Method for Transparent Wireless Communication Between a Remote Device and a Host System" (issued July 9, 2002) — a mobile router/"mobile data controller" that presents several simultaneously connected, dissimilar networks (e.g., WLAN and WWAN) to an application and switches between them so an in-progress session is not disrupted; US 6,198,920, "Apparatus and Method for Intelligent Routing of Data Between a Remote Device and a Host System" (issued March 6, 2001) — the intelligent selection/routing of data across the available network interfaces; and US 6,826,405, same title as the '920 (issued November 30, 2004, added by amended complaint), whose written description the court noted was "substantively amended during prosecution," a fact that fed NetMotion's § 112 defense. The court's claim construction of "dissimilar networks," "parallel networks," and "a transmission occurs while switching" (requiring redirection of an ongoing transmission over only one network at a time) drove the February 22, 2006 summary-judgment ruling denying NetMotion's invalidity motions over the Project Octopus thesis and the BARWAN article.

Posture, venue, and why it matters. Suit was filed October 26, 2003 in the District of Delaware before Chief Judge Sue L. Robinson; the case number 03-983-SLR reflects her initials, and the docket ran to well over 300 entries. Venue was contested and litigated: NetMotion moved to dismiss for lack of personal jurisdiction and improper venue, and DSI moved to transfer to the Northern District of California; both were denied on May 24, 2004 (2004 WL 1192641), the court finding specific/general jurisdiction under the Delaware long-arm statute based on a Mobility evaluation download by the Wilmington Police Department, a January 2004 Mobility newsletter emailed to 23 Delaware entities, and NetMotion's national website and HP iPAQ bundle promotion. That opinion is a useful pre-TC Heartland snapshot: the case was in Delaware not because of a plaintiff's forum-shopping strategy but because a Delaware reseller was a defendant and the court accepted stream-of-commerce contacts as venue-suffices. The litigation spawned satellites — a NetMotion/DSI declaratory judgment action in N.D. Cal. (stayed as second-filed), a NetMotion tortious-interference suit removed to W.D. Wash., and a December 28, 2005 Padcom DJ action in Delaware against a newly issued NetMotion patent. On the merits, after Markman and the denied summary-judgment motions, a jury on March 28, 2006 found the asserted claims valid and infringed; NetMotion moved for JMOL and Padcom moved for a permanent injunction (briefing April–May 2006), and NetMotion announced a non-infringing redesign within 30 days of the verdict.

Why it is notable. Three things. First, it is an early, fully tried example of "seamless roaming"/mobile-VPN patent litigation in a market (public safety, utilities, field service) that later became crowded — and the verdict forced a real product change, not just a license payment. Second, the case did not end in an injunction-driven settlement or an appeal but in a merger: NetMotion and Padcom announced a no-cash stock combination in June 2006 (NYT DealBook, June 15, 2006; AP/NH Register coverage), with the combined company keeping the NetMotion name and NetMotion CEO Bob Hunsberger at the helm and Padcom chairman Gordon Smith as chairman; press coverage described the deal as ending the litigation. Stipulated final judgment was entered July 12, 2006. Third, for assertion-pattern purposes it is the anti-NPE template: two operating competitors, a reseller as venue hook, contested personal jurisdiction, and a consolidated patent family (one specification, three patents) that a defendant attacked on § 102, § 103, and § 112 grounds.

Sourcing caveats. Party names, dates, patents, and docket events above are drawn from the court's own opinions (May 24, 2004 venue/jurisdiction opinion at 2004 WL 1192641; February 22, 2006 summary-judgment opinion; the post-trial opinion reproduced on Casemine/Cetient) and contemporaneous trade press (Light Reading, Oct. 27, 2003; Dec. 28, 2005; Mar. 29, 2006) and merger coverage. Two items I could not verify and therefore do not state: (1) a specific jury damages figure — the verdict was on validity/infringement and damages briefing was to follow, but the docket resolution via stipulated judgment means no reported damages award I can source; and (2) the patent number of NetMotion's counterclaim/DJ patent asserted in the December 2005 Padcom action. There is also a minor conflict in secondary sources on the '920 issue date (the court's opinion text says March 6, 2002; Light Reading and Google Patents say March 6, 2001 — I use 2001). This case predates the AIA, so there are no IPRs or PTAB proceedings linked to it; any later assertion history of the '324/'920/'405 family after the 2006 merger is outside what I could confirm here and should be checked against the USPTO assignment records before being relied on.

I'll research this case systematically across docket sources, opinions, and news coverage.

Good initial material. Now let me pull the docket, opinions, and Markman ruling.

Padcom, Inc. v. NetMotion Wireless, Inc., No. 03-983-SLR (D. Del.) — Chronology of Key Developments

Note on posture: This is a closed 2003–2006 pre-eBay docket. Docket-level detail below is anchored to the opinions and documents I could verify; where a specific date or filing is derived by inference rather than a primary source, I say so explicitly.

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1. Pre-suit landscape and parallel actions

• 2001-02-02 — NetMotion's corporate predecessor, WRQ, Inc., enters the picture (referenced in the venue/jurisdiction record). NetMotion was spun out of WRQ in 2001, making it a later market entrant relative to Padcom — the factual premise of Padcom's "late entrant" infringement theory.
• 2003-10-27 — Padcom (Bethlehem, PA) files the Delaware complaint. Padcom's press release that morning confirms the filing date; the case metadata date of 2003-10-26 likely reflects the docketing/ECF timestamp. Asserted patents: US 6,418,324 ("Apparatus and Method for Transparent Wireless Communication Between a Remote Device and Host System," issued 2002-07-09) and US 6,198,920 ("Apparatus and Method for Intelligent Routing of Data Between a Remote Device and a Host System," issued 2001-03-06). The complaint joined Database Solutions, Inc. (DSI) of Wilmington as a Delaware reseller defendant and added tortious interference with prospective contractual relations and common-law unfair competition counts alongside infringement — the interference claim centered on Padcom's failed AT&T Wireless negotiations and NetMotion's competing AT&T Wireless deal.

Strategic note: Joining a small in-state reseller is the classic Delaware-venue anchor play, and it worked — see §3.

• Parallel N.D. Cal. DJ action — DSI filed a declaratory judgment action in the Northern District of California, which became the basis for DSI's § 1404(a) transfer motion.
• 2004 (pre-trial) — NetMotion filed a third action in King County Superior Court, Washington, alleging Padcom tortiously interfered with NetMotion's contracts and business expectancies. Padcom removed it to the W.D. Wash. on 2004-03-24 (NetMotion Wireless Inc. v. Padcom, Inc., No. 04-cv-622-JCC), then moved on 2004-04-27 to transfer to D. Del. or stay pending the Delaware case.
• 2004-05-04 — Padcom moves in Delaware for an order enjoining prosecution of the Washington action and requests a Rule 16 conference (D.I. 33).

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2. The jurisdiction/venue fight — the first substantive ruling

• 2004-05-24 — Judge Sue L. Robinson denies defendants' combined motion to dismiss for lack of personal jurisdiction and to transfer venue (D.I. 9). Padcom, Inc. v. NetMotion Wireless, Inc., 2004 WL 1192641 (D. Del. May 24, 2004).
  • Personal jurisdiction: the court upheld jurisdiction under 10 Del. C. § 3104(c)(1) and (c)(4), finding NetMotion "intentionally and knowingly transacted business" in Delaware based on (i) a free trial download of Mobility obtained by the Wilmington Police Department via an HP iPAQ bundling promotion, including follow-up support emails aimed at converting the trial into a purchase; (ii) third-party telemarketing targeting seven Delaware public-safety entities (Dover PD, New Castle County PD, Delaware State Police, etc.); (iii) targeted mailings to Delaware hospitals and public-safety agencies; and (iv) a January 2004 nationwide "Mobility Connection" e-newsletter sent to 23 Delaware entities. Critically, the court held that the absence of consummated Delaware sales did not defeat jurisdiction — the purposeful attempts sufficed, and NetMotion "could have specifically excluded" Delaware from its lists.
  • Transfer: denied. The court applied the Jumara private/public interest factors and gave "paramount" deference to Padcom's forum choice, noting Padcom (PA) and DSI (NJ) were both proximate to Delaware and NetMotion marketed nationwide.
  • Case-management consequence: defendants ordered to answer by 2004-06-11.

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3. Answer and counterclaims

• On or about 2004-06-11 — NetMotion (and DSI) answer and assert counterclaims. Per the court's later opinions, NetMotion's counterclaims included declarations of non-infringement and invalidity of the '324, '920, and (later) '405 patents. Caveat: the exact filing date and the full counterclaim caption are inferred from the court's June 11 deadline; I did not locate the answer document itself.

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4. Amendment to add the '405 patent

• 2004-11-30 — US 6,826,405 issues (same family; all asserted claims claim priority to the 1997-09-17 filing date of the '324 patent).
• 2005 (early) — Padcom amends to add the '405 patent to the suit. The precise amended-complaint date is not confirmed in the sources I reviewed; the '405 was in suit by the fall 2005 claim construction and summary judgment briefing, and the case summary's statement that it was "added by amended complaint" is consistent with the docket.

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5. Discovery milestones of strategic significance

• 2003–2004 — Jurisdictional discovery (D.I. 24, Exs. A–M): this is where Padcom obtained NetMotion's telemarketing call lists, hospital/public-safety mailing lists, the Wilmington PD trial-download email chain, and the newsletter distribution data. That record was dispositive on the Rule 12(b)(2) motion and is the single most consequential discovery episode in the case.
• 2005 — Merits discovery focused on: (i) the priority date and written-description support for the '405 claims (the '405 specification was substantively amended during prosecution, unlike the '920, whose written description is "virtually identical" to the '324's — a key § 112 vulnerability); (ii) prior art, particularly the "Project Octopus" Thesis and the BARWAN Article; and (iii) the accused product configuration across ten incremental Mobility versions (3.0, 3.1, 3.5, 4.0, 4.01, 5.0, 5.01, 6.0 (XE), 6.01 (XE)), each of which had to be mapped to the "parallel/dissimilar networks" and "transmitting while switching" limitations.
• Fall 2005 — Expert discovery on validity (clear-and-convincing § 102) and infringement, which supplied the genuine issues of material fact that defeated summary judgment.

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6. Claim construction (Markman)

• 2005-09-15 — Padcom files its opening claim construction brief (published as 2005 WL 2867886).
• 2005-10-13 / 2005-10-14 — Responsive Markman briefing: NetMotion's answering claim construction brief and Padcom's answering brief to NetMotion's Markman brief (Oct. 13); Padcom's opposition to NetMotion's § 112 summary judgment motion on the '405 (Oct. 14).
• Late 2005 (before 2006-02-22) — The court issues its claim construction ruling. The separate Markman opinion/order date is not confirmed in my sources. The constructions, however, are recoverable from the court's February 22, 2006 opinion, which applied them:
  • "dissimilar networks" — networks different at the data-link layer, the network layer, or both (this construction helped NetMotion, since it accepted that BARWAN disclosed dissimilar networks).
  • "parallel networks" — requires two common endpoints.
  • "a transmission occurs while switching" — "the router redirects transmission of data or data packets from one network to another network, without disrupting or reinitiating the transmission, and sending the data or data packets over only one of the networks at a time." This last limitation was the decisive one: it excluded IP-Multicast/duplicate-packet systems and gave Padcom its best non-infringement/validity distinctions.
  • Note also that claim 58 of the '324 patent was treated as not requiring two parallel networks connected simultaneously — a carve-out the court expressly flagged.

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7. Pre-trial dispositive motions — summary judgment denied

• 2006-02-22 — Judge Robinson denies NetMotion's motion for summary judgment of invalidity under 35 U.S.C. § 102 (D.I. 278). Padcom, Inc. v. NetMotion Wireless, Inc., Civ. No. 03-983-SLR (D. Del. Feb. 22, 2006).
  • Project Octopus Thesis: NetMotion attacked only three limitations. The court found genuine disputes over whether Project Octopus connects more than one network at a time (its Local Framework negotiated one network at a time) and whether it stops/disrupts the transmission during handoff. Denied.
  • BARWAN Article: the court accepted that BARWAN met "dissimilar networks" (under its construction) and "parallel networks," but found a genuine dispute on "transmitting while switching" — Padcom's expert testified BARWAN's IP-Multicast approach transmits duplicate packets over multiple base stations, which the court's one-network-at-a-time construction excludes. Denied.
  • The court also noted NetMotion had not carried its clear-and-convincing burden on the remaining claim limitations.

I'll research the plaintiff-side counsel of record in this case.

The May 24, 2004 opinion caption lists plaintiff's counsel. Let me verify against the trial/post-trial filings and check for later additions.

Let me pull the docket sheet to confirm the full roster and any later additions.

Plaintiff-side counsel of record — Padcom, Inc.

Bottom line: Padcom was represented by a two-tier team throughout: a Delaware firm (Young Conaway Stargatt & Taylor) as local/of-record counsel, and a Reston, Virginia IP boutique (Greenblum & Bernstein, P.L.C.) as lead substantive patent counsel. The May 24, 2004 venue/jurisdiction opinion lists the full roster in its caption, and the December 2005 filings in the companion declaratory-judgment action (C.A. No. 05‑889‑SLR) corroborate it with one addition (Michael J. Fink).

Verified roster

Corroborating source for the roster

The caption of Padcom, Inc. v. NetMotion Wireless, Inc., 2004 WL 1192641 (D. Del. May 24, 2004), reads: "Josy W. Ingersoll, John W. Shaw, and Adam W. Poff, of Young Conaway Stargatt & Taylor, LLP, Wilmington, Delaware, Neil F. Greenblum, Van C. Ernest, and Jill M. Browning, of Greenblum & Bernstein, P.L.C., Reston, Virginia, of counsel" — followed by the defendants' separate block (Mary B. Graham and James W. Parrett, Jr., Morris, Nichols, Arsht & Tunnell; John Allcock, M. Elizabeth Day, William G. Goldman, and Michael G. Schwartz, Gray Cary Ware & Freidenrich). The opinion is reproduced at Casetext (http://g.casetext.com/case/padcom-inc-v-netmotion-wireless) and in the Internet Archive docket-file mirror (https://www.archive.org/download/gov.uscourts.ded.36567/gov.uscourts.ded.36567.27.0.pdf). The Dec. 28, 2005 disclosure statement in C.A. 05‑889‑SLR carries the Young Conaway firm name plus the four G&B attorneys as "Attorneys for Plaintiff Padcom, Inc." (https://www.findforms.com/single_form.php/form/[151137](/patent/151137)/), and G&B's current bio for Fink is at https://www.gbpatent.com/attorneys/michael-j-fink/.

Role characterization — a caveat

The West-style caption format lists all counsel in one string with a single "of counsel" tag, so the opinion does not itself cleanly allocate "lead" vs. "local." Functionally, however, the allocation is clear from the filings: Greenblum & Bernstein was the substantive patent prosecution/litigation team that signed the complaint, the disclosure statement, the summary-judgment briefs, and the DJ filings, while Young Conaway supplied the Delaware of-record presence required by D. Del. Local Rule 83.5. On that reading, Greenblum was lead counsel and Ingersoll/Shaw/Poff were Delaware counsel.

What I could not verify (do not treat as established)

• No in-house Padcom attorney appears of record. Padcom's CEO (Scott A. Stone) and prior CEO spoke in press releases, but I found no Padcom legal-department lawyer entering an appearance. That is a negative finding from the documents I could retrieve, not a docket-wide confirmation.
• Full docket sheet not retrieved. My attempts to pull the complete CourtListener/Internet Archive docket for D. Del. 03‑983‑SLR were cut off. Because the docket ran past 300 entries and the trial occurred in March 2006, I cannot rule out additional appearances after May 2004 — e.g., a trial specialist or an additional G&B associate admitted pro hac vice for the February–March 2006 trial, or a substitution of local counsel in the 2005–06 window. The 2006 post-trial opinion caption (Casemine/Cetient) would settle this and should be pulled before the roster is treated as complete; I was unable to inspect its caption within this session.
• Later career details for Ingersoll, Shaw, and Poff (current titles, whether they remain at Young Conaway) are stated from general background rather than from a source retrieved here — verify against firm bios before publication.

Cross-check against the existing case summary

No contradictions with the prior sections. One clarification worth adding: the earlier summary attributes Padcom's filing representation to "Neil Greenblum of Greenblum & Bernstein (Reston, Va.)," which is correct but incomplete — the Delaware of-record firm was Young Conaway from the outset (it appears in the May 2004 caption), so the earlier framing should not be read to suggest Padcom filed without local counsel. Michael J. Fink should also be added to the earlier narrative's account of the December 28, 2005 DJ action (C.A. 05‑889‑SLR), since he — not Greenblum alone — was among the four G&B signatories on those papers.

I'll research defense counsel of record in this case.

Good leads. Let me pull the docket sheet and identify DSI's counsel.

Counsel of record for the defendants — what is and isn't verified

Bottom line first, because the sourcing here is unusual. I could not retrieve the actual 03-983-SLR docket sheet or any 03-983 signature block in this session (CourtListener/archive.org's gov.uscourts.ded.36567 capture contains the Markman and summary-judgment papers but the search snippets returned content, not counsel pages). What I did find is a set of verbatim signature blocks and a sworn declaration establishing NetMotion's litigation team in the closely related, same-judge, same-parties Delaware action, C.A. No. 05-889-SLR (Padcom, Inc. v. NetMotion Wireless, Inc., the December 27, 2005 declaratory-judgment case over NetMotion's '047 patent). That team is almost certainly the same team that tried 03-983, but I am labeling the inference as an inference rather than dressing it up as docket-verified fact.

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1. NetMotion Wireless, Inc. — verified in C.A. No. 05-889-SLR (Jan. 6, 2006 filings)

These four appear on the signature block of Defendant NetMotion Wireless, Inc.'s Motion to Dismiss the Declaratory Judgment Complaint and the supporting declaration, filed January 6, 2006 in 05-889-SLR:

Source: motion and Lutton declaration reproduced at findforms.com (D. Del. filings, C.A. No. 05-889-SLR, filed 01/06/2006); a second copy of the same signature block appears in NetMotion's Opening Brief in Support of its Motion to Dismiss, also dated January 6, 2006, which additionally shows the Wilmington service address and the F&R Austin, Tex. and Redwood City, Calif. offices.

2. Why I treat this as the 03-983 team

Three independent indicators, none of them conclusive on its own:

1. Same firm, same court, same judge, same client, eleven weeks before the 03-983 trial. F&R was demonstrably NetMotion's patent counsel in Judge Robinson's courtroom in the run-up to and aftermath of the March 28, 2006 verdict.
2. Institutional knowledge in the F&R papers of 03-983 itself. The 05-889 briefing refers to Padcom I (C.A. No. 03-983) as "the only action in which these two parties have litigated any patents" and describes its procedural history in detail — the kind of familiarity that comes from having litigated it.
3. The Lutton declaration's framing — "NetMotion did not assert any of its patents in Padcom Inc. v. NetMotion Wireless, et al., C.A. No. 03-983 (D. Del. 2003) ('Padcom I')" — reads as counsel who was there.

What I could not verify: whether Marsden/Hayes/Lutton/Shelton were formally of record in 03-983 (as opposed to 05-889 only), and whether NetMotion used a different Delaware firm in 03-983 between October 2003 and 2005. Note that the 03-983 docket's defense-side activity begins with the combined Rule 12(b)(2)/§ 1404(a) motion at D.I. 9, denied May 24, 2004 (2004 WL 1192641). D.I. 9's signature block is the single document that would settle this, and I did not obtain it.

3. Database Solutions, Inc. — no counsel identified

I could not identify DSI's counsel of record, and I will not guess. DSI was the Wilmington-based reseller whose presence anchored venue, and it was the party that moved to transfer to N.D. Cal. under § 1404(a) (denied in the same May 24, 2004 opinion). It was a small regional reseller, so its counsel was most likely a Delaware general-practice or small IP boutique rather than an AmLaw firm — but that is speculation and I am not naming anyone. Confirm via the D.I. 9 motion papers (which were joint defense filings) or any DSI-specific filing.

4. A related-case firm that should not be confused with 03-983 counsel

In C.A. No. 04-1276-GMS, Admiral Insurance Co. v. NetMotion Wireless, Inc. — NetMotion's insurer's declaratory-judgment action over coverage for the Padcom litigation, dismissed with prejudice May 24, 2005 — NetMotion was represented by Donald E. Reid (D. Del. I.D. #1058), Morris, Nichols, Arsht & Tunnell, 1201 North Market Street, Wilmington (with plaintiff Admiral represented by Thomas P. Preston of Blank Rome and, of counsel, Jeffrey A. Goldwater/Robert A. Chaney of Bollinger, Ruberry & Garvey, Chicago). That is coverage counsel in a different case; it is not evidence of the 03-983 defense team, and I would not cite Morris Nichols as 03-983 counsel on this record.

5. For completeness: the other side

Not asked, but useful for the verification pass and to avoid mis-attribution: Padcom's Delaware local counsel by late 2005 was Josy W. Ingersoll and Adam W. Poff of Young Conaway Stargatt & Taylor, LLP, The Brandywine Building, 17th Floor, 1000 West Street, Wilmington (they are the service addressees and the "Plaintiff Padcom, Inc." Delaware counsel named in the 05-889 certificates of service), with Jill M. Browning and Michael Fink of Greenblum & Bernstein, P.L.C., 1950 Roland Clarke Place, Reston, Va., as non-registered (pro hac vice) counsel. Padcom's October 2003 press release announcing the filing named Neil Greenblum of Greenblum & Bernstein as its counsel. Note the switch: Greenblum appears to have been lead at filing; by 2005–06 the Greenblum-side names on the papers are Fink and Browning.

6. Suggested verification steps (each is a single document pull)

• D.I. 9 (defendants' motion to dismiss/transfer, ~Feb.–Apr. 2004): shows the original defense teams for both NetMotion and DSI.
• D.I. 10–12, 28 (opposition/affidavits, incl. the Bob Colliton CFO declaration): signature blocks plus confirmation that Colliton was a client declarant, not counsel.
• D.I. 278 (NetMotion's § 102 summary-judgment motion, Feb. 2006): trial-team signature block most proximate to the verdict.
• D.I. 291/281 (Feb. 22, 2006 opinions) — already located at ded.uscourts.gov (03-983b.pdf); opinions themselves do not list counsel.
• The stipulated final judgment (July 12, 2006): the last signature blocks of record; whoever signed it was counsel of record at termination.
• N.D. Cal. DJ action and W.D. Wash. No. 04-cv-622-JCC (NetMotion v. Padcom, removed Mar. 24, 2004): these would show whether NetMotion used West Coast counsel for the