Case 4:20-cv-07572-JSW Document 48 Filed 07/16/21 Page 1 of 4
`
`
`
`
`Frank E. Scherkenbach (SBN 142549 /
`scherkenbach@fr.com)
`Adam J. Kessel (Admitted pro hac vice /
`kessel@fr.com)
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Tel: (617) 542-5070 | Fax : (617) 542-8906
`
`Michael R. Headley (SBN 220834 /
`headley@fr.com)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Tel: (650) 839-5070 | Fax: (650) 839-5071
`
`Attorneys for Plaintiffs
`BYTEDANCE INC., TIKTOK INC., and
`TIKTOK PTE. LTD.
`
`
`M. Elizabeth Day (SBN 177125)
`eday@feinday.com
`Marc Belloli (SBN 244290)
`mbelloli@feinday.com
`FEINBERG DAY KRAMER ALBERTI
`LIM TONKOVICH & BELLOLI LLP
`577 Airport Blvd., Suite 250
`Burlingame, CA. 94010
`Tel: 650 825-4300 | Fax 650 460-8443
`
`Brian N. Platt (Admitted pro hac vice)
`bplatt@wnlaw.com
`Brent P. Lorimer (Admitted pro hac vice)
`blorimer@wnlaw.com
`WORKMAN NYDEGGER
`60 East South Temple Suite 1000
`Salt Lake City, UT 84111
`Tel: 801-533-9800 | Fax 801-328-1707
`
`Attorneys for Defendant
`TRILLER, INC.
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`(OAKLAND DIVISION)
`
`
`BYTEDANCE INC., TIKTOK INC., AND
`TIKTOK PTE. LTD.
`
`
`
`
`Plaintiffs
`
`Case No. 4:20-cv-7572-JSW
`
`JOINT NOTICE REGARDING
`TRANSFER OF RELATED CASE
`BETWEEN THE PARTIES FROM W.D.
`TEX. TO THE NORTHERN DISTRICT,
`PER DKT. NOS. 44 & 47
`
`v.
`
`
`TRILLER, INC.
`
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`JOINT NOTICE RE: CASE TRANSFERRED
`TO N.D. CAL. FROM W.D. TEX.
` Case No. 4:20-cv-7572-JSW
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:20-cv-07572-JSW Document 48 Filed 07/16/21 Page 2 of 4
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Plaintiffs ByteDance Inc., TikTok Inc., and TikTok Pte. Ltd (“Plaintiffs” or “TikTok”) and
`
`Defendant Triller, Inc. (“Defendant” or “Triller”) hereby submit this joint notice pursuant to the
`
`Court’s prior orders (Dkt. Nos. 44 & 47) directing the submission of a report following Judge
`
`Albright’s ruling on TikTok’s motion to transfer another case between the parties (6:20-cv-693-
`
`ADA) from the Western District of Texas to this District.
`
`Judge Albright granted TikTok’s motion to transfer on July 7, 2021 (6:20-cv-693-ADA,
`
`Dkt. No. 85), and that other case has been transferred to this District (3:21-cv-5300-JSC). Given
`
`the overlapping subject matter between the two cases pending in this District, the parties agree that
`
`the transferred case (3:21-cv-5300-JSC) should be related to the above-captioned matter, and the
`
`10
`
`most efficient path forward is for this Court to oversee both cases. Triller believes that the caption
`
`11
`
`should reflect Triller’s status as a plaintiff, as the Texas case was filed before the action filed in this
`
`12
`
`District. TikTok believes it is unnecessary and premature to address (re)alignment of the parties at
`
`13
`
`this stage. The parties intend to decline the magistrate and file related case papers shortly. The
`
`14
`
`parties therefore request that the Court set a CMC to discuss scheduling and next steps. The parties’
`
`15
`
`separate views as to the appropriate next steps are as follows:
`
`16
`
`TikTok’s position: The PTAB instituted IPR proceedings on Triller’s sole asserted patent in
`
`17
`
`the transferred case in April 2021, with a Final Written Decision due no later than the end of April
`
`18
`
`2022. TikTok believes the Court should stay all proceedings regarding Triller’s asserted patent
`
`19
`
`pending the resolution of the IPR proceedings, to conserve resources. This would include all
`
`20
`
`proceedings in the transferred case, and TikTok’s pending declaratory judgment claim in its case.
`
`21
`
`Triller indicates below it agrees with this approach.
`
`22
`
`However, there is no reason to delay any further the proceedings on TikTok’s three asserted
`
`23
`
`patents in the above-captioned matter, as TikTok first asserted its patent infringement claims against
`
`24
`
`Triller over eight months ago (on November 11, 2020) and Triller has not filed any IPRs
`
`25
`
`challenging TikTok’s patents. In particular, there is no basis for staying TikTok’s case due to
`
`26
`
`Triller’s Section 101 motion, which was never fully briefed. (See Dkt. No. 47.) For reasons
`
`27
`
`TikTok can address in more detail at the Court’s convenience if necessary, Triller’s motion was
`
`28
`
`(and is) premature given that no discovery or claim construction has occurred. And Triller’s
`
`
`
`
`
`1
`
`JOINT NOTICE RE: CASE TRANSFERRED
`TO N.D. CAL. FROM W.D. TEX.
`Case No. 4:20-cv-7572-JSW
`
`

`

`Case 4:20-cv-07572-JSW Document 48 Filed 07/16/21 Page 3 of 4
`
`
`
`
`Section 101 arguments against TikTok’s patents apply with more force to Triller’s own patent, so
`
`the Court should address any Section 101 issues in the case later, for all patents, after the pending
`
`IPR against Triller’s patent is resolved and any IPRs against TikTok’s patents are filed and
`
`resolved.
`
`Triller’s position: Triller does not oppose a stay of proceedings related to Triller’s claims
`
`for patent infringement in the transferred case and TikTok’s pending declaratory judgment claims
`
`related to that same patent pending resolution of the IPR proceedings filed by the TikTok parties.
`
`Triller believes that the remaining claims of the Amended Complaint (the Second, Third and Fourth
`
`Claims for Relief) should be stayed. The Second, Third and Fourth Claims for Relief of the
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`Amended Complaint assert patents the TikTok parties acquired for purposes of this litigation
`
`11
`
`against Triller. Triller has filed a Motion for Judgment on the Pleadings as to the Second, Third and
`
`12
`
`Fourth Claim for Relief of the Amended Complaint (ECF No. 46), seeking judgment that the
`
`13
`
`patents asserted by TikTok are invalid under 35 U.S.C. § 101. In order to conserve judicial
`
`14
`
`resources, Triller suggests that all proceedings related to those claims be stayed until the Court has
`
`15
`
`resolved the pending motion for judgment on the pleadings. If that motion is resolved favorably to
`
`16
`
`Triller, all matters will be effectively stayed. TikTok’s argument that Triller’s § 101 motion should
`
`17
`
`not be addressed now and that proceedings related to TikTok’s asserted patents should not be stayed
`
`18
`
`are incorrect. The fact that Triller’s § 101 motion has not been fully briefed is easily resolved as
`
`19
`
`that briefing can now proceed. There is no reason briefing and resolution of the motion cannot or
`
`20
`
`should not be resolved expeditiously. Alice motions are most often considered at the outset of
`
`21
`
`proceedings. Further, TikTok’s assertion that the Court should delay consideration of all § 101
`
`22
`
`motions (pending and future) until resolution of all IPRs (pending and future) merely serves to
`
`23
`
`confirm that this entire matter should be stayed, as proposed by Triller. If Triller’s § 101 motion is
`
`24
`
`not granted or the case is not stayed, Triller intends to file one or more IPRs challenging TikTok’s
`
`25
`
`patents, and will seek a stay based on the IPR proceedings. Accordingly, a complete stay of all
`
`26
`
`proceedings until resolution by the PTAB, and/or the issuance of a ruling on Triller’s Motion to
`
`27
`
`Dismiss, is warranted.
`
`28
`
`
`
`
`
`2
`
`JOINT NOTICE RE: CASE TRANSFERRED
`TO N.D. CAL. FROM W.D. TEX.
`Case No. 4:20-cv-7572-JSW
`
`
`
`

`

`Case 4:20-cv-07572-JSW Document 48 Filed 07/16/21 Page 4 of 4
`
`
`
`
`Dated:
`
`FISH & RICHARDSON P.C.
`
`
`/s/ Michael R. Headley
`Michael R. Headley
`
`Attorneys for Plaintiffs
`BYTEDANCE INC., TIKTOK INC., and
`TIKTOK PTE. LTD.
`
`
`Dated:
`
`WORKMAN NYDEGGER
`
`
`/s/ Brent P. Lorimer
`Brent P. Lorimer
`
`Attorneys for Defendant
`TRILLER, INC.
`
`
`
`
`
`I hereby attest under penalty of perjury that concurrence in the filing of this document has
`
`been obtained from counsel for Defendant.
`
`Dated:
`
`FISH & RICHARDSON P.C.
`
`By: /s/Michael R. Headley
` Michael R. Headley
`
`Attorneys for Plaintiffs
`BYTEDANCE INC., TIKTOK INC., and
`TIKTOK PTE. LTD.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`3
`
`JOINT NOTICE RE: CASE TRANSFERRED
`TO N.D. CAL. FROM W.D. TEX.
`Case No. 4:20-cv-7572-JSW
`
`
`
`