Case 2:18-cv-00299-JRG Document 305 Filed 12/23/19 Page 1 of 9 PageID #: 10840
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`LUMINATI NETWORKS LTD.,
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`Plaintiff,
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`v.
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`UAB TESONET AND METACLUSTER
`UAB,
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`Defendants.
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`Case No. 2:18-CV-0299-JRG
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`JURY TRIAL DEMANDED
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`LUMINATI NETWORKS LTD.’S MOTION TO CONSOLIDATE CASES AND RESET
`FEBRUARY 3, 2019 TRIAL DATE TO ACCOMMODATE A CONSOLIDATED TRIAL
`AS ORDERED BY THE COURT
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`CODE200 ET AL. EXHIBIT 1005
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`Case 2:18-cv-00299-JRG Document 305 Filed 12/23/19 Page 2 of 9 PageID #: 10841
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`INTRODUCTION .................................................................................................................... 1
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`I.
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`TABLE OF CONTENTS
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`II. BACKGROUND AND PROCEDURAL HISTORY ............................................................... 2
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`III. ARGUMENT ............................................................................................................................ 3
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`A. Legal Standard ........................................................................................................... 3
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`B. Consolidation is Appropriate Because There Are Common Legal Issues, The
`Patents are Related, and the Parties and Accused Products are Nearly Identical ...... 3
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`C. Consolidation Would Prevent Unnecessary Costs and Conserve Judicial Resources 4
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`D. Consolidation Would Not Prejudice Either Party ...................................................... 5
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`IV. CONCLUSION ......................................................................................................................... 5
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`i
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`I.
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`INTRODUCTION
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`Plaintiff Luminati Networks Ltd. (“Luminati”) hereby moves this Court, pursuant to
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`Federal Rule of Civil Procedure 42 to consolidate this case with the recently filed Luminati
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`Networks Ltd. v. Teso LT, UAB a/k/a UAB Teso LT et al., Case No. 2-19-cv-00395 (the “395
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`action”) which was recently filed in this Court on December 6, 2019 and related to patents that
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`just issued last month.1 Luminati immediately provided copies of the Complaint in the 395 action
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`to opposing counsel and are currently working to serve the Complaint on defendants.
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`The 395 action involves the same parties (Luminati, Teso, Metacluster and Oxysales,
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`UAB—the sales arm of Teso and Metacluster), the same accused products—Defendants’
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`residential proxy service and a newly issued related patent sharing the same specification as the
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`patents asserted in this case, as well as two other patents from another patent family that is also
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`involved in this case. Discovery in the 395 action will be limited as the discovery in the this case
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`has been completed and relates directly to the allegations in the 395 action. Plaintiff would be
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`prepared to try this case at the Court’s earliest convenience after July 2020, after trial in the
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`Luminati v. Bi Science case currently set for trial in June 2020.
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`The 395 action is also pending in this Court so there will be no change of venue associated
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`with Plaintiff’s request to consolidate. Accordingly, in the interests of avoiding unnecessary costs,
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`expenses, and use of judicial resources associated with holding at least two separate trials
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`concerning the same accused products and related patents between the same parties, Luminati
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`requests that the Court reset this case for trial and set a consolidated trial date for this case and the
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`395 action.
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`1 Plaintiff is contemporaneously filing an unopposed Motion to Expedite Briefing pursuant to
`which Defendants’ will file their opposition hereto by December 31, 2019. Plaintiff is available
`for a hearing on this motion any time thereafter including on January 2 the day before the pretrial
`conference.
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`1
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`II.
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`BACKGROUND AND PROCEDURAL HISTORY
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`Luminati filed this lawsuit against UAB Tesonet on July 19, 2018 alleging that UAB
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`Tesonet’s residential proxy service infringes asserted U.S. Patent Nos. 9,241,044 and 9,742,866.
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`(Dkt. No. 1 at ¶ 8). After Luminati sued UAB Tesonet, the entity went through a corporate
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`reorganization which resulted in UAB Tesonet changing its name to UAB Teso LT (“UAB Teso”)
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`and the formation of new corporate entities including UAB Metaclsuter LT (“Metacluster”). (See
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`Court Order granting Luminati’s Motion to Amend, Dkt. No. 92 at 2-3). The Court granted
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`Luminati leave to Amend its Complaint to add Metacluster as a Defendant, noting that “Luminati’s
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`infringement claims against the alleged conduct previously undertaken by Tesonet but now
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`disclosed by Teso as being undertaken by Metacluster are important and should not be relegated
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`to a separate action that would needlessly duplicate the Court’s and the parties’ expenditure of
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`resources.” (Id. at 2).
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`This litigation proceeded through claim construction, fact and expert discovery, and the
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`parties are currently engaged in pretrial briefing with a pretrial hearing scheduled for January 3,
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`2020 and jury selection scheduled for February 3, 2020.
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`However, just last month Luminati obtained new patents and filed the 395 action regarding
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`the same technology, Defendants’ accused product. Luminati filed the 395 action on December 6,
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`2019 naming Teso, Metaculster, and their sales arm Oxysales as Defendants. The Tesonet entities
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`involved in the new litigation all sprung from the post-filing reorganization of UAB Tesonet and
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`all fall under the Tesonet family of companies. Luminati provided a courtesy copy of the lawsuit
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`to counsel for Defendants immediately after it was filed and is actively pursuing service of the
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`second lawsuit now.
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`The asserted patents in the 395 action are U.S. Patent Nos. 10,469,614 (the “’614 Patent”)
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`issued on April 9, 2019, 10,257,319 (the “’319 Patent”) issued on November 5, 2019, and
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`2
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`10,484,510 (the “’510 Patent”) issued on November 19, 2019. (See Dkt. No. 1 at ¶ 14 in the 395
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`action). All of the patents asserted in the 395 action were issued after Luminati filed this lawsuit
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`and as recently as approximately one month ago.
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`Shortly after the second lawsuit was filed, counsel for Plaintiff and Defendant met and
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`conferred about how the second filing impacted the overall set of lawsuits and whether there was
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`a more efficient way to handle the cases together. However, counsel was unable to reach agreement
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`as to the best course of action.
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`III. ARGUMENT
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`A. Legal Standard
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`Fed. R. Civ. P. provides that: “if actions before the court involve a common question of
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`law or fact, the court may: (1) join for hearing or trial any or all matters at issue in the actions; (2)
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`consolidate the actions; or (3) issue any other orders to avoid unnecessary cost or delay.” “A trial
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`court has broad discretion in determining whether to consolidate a case pending before it. Nat’l
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`Ass’n for Advancement of Colored People of La. v. Michot, 480 F.2d 547, 548 (5th Cir. 1973); See
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`also In re EMC Corp., 677 F.3d 1351, 1360 (Fed. Cir. 2012) (holding that “the district court has
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`considerable discretion to consolidate cases for discovery and for trial under Rule 42.”). The Court
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`in EMC held that “[t]he existence of a common question by itself is enough to permit consolidation
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`under Rule 42(a), even if the claims arise out of independent transactions.” See Innovative
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`Automation, LLC v. Audio Video & Video Labs, Inc., No. 6:11-CV-234 LED-JDL, 2012 U.S. Dist.
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`LEXIS 114503, at *53 (E.D. Tex. 2012) (consolidating cases where overlapping facts existed).
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`B. Consolidation is Appropriate Because There Are Common Legal Issues, The
`Patents are Related, and the Parties and Accused Products are Nearly Identical
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`All of the Defendants in this case and the 395 action sprung from Tesonet’s corporate
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`reorganization. In addition to the patent infringement counts, the 395 case also includes tort counts
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`3
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`related to trade secret misappropriation, unauthorized computer access, false advertising and
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`tortious interference with business relationships. These counts are similar to the counts originally
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`pled by Luminati in its Complaint and Amended Complaint against Defendants in this action so
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`the relevant facts in the actions, as originally filed, are nearly identical.
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`The product accused of infringement in this litigation and the 395 action is Defendants
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`residential IP proxy service and its Real-Time Crawler product. The asserted patents in the
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`litigations are also related. The ‘614 patent is a continuation in the same family as the ‘044 and
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`‘866 patents in this case, and the ‘319 and ‘510 are in the same family and share a specification
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`with a patent application asserted as prior art in this case. Thus, the subject matter overlap is
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`substantial.
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`C. Consolidation Would Prevent Unnecessary Costs and Conserve Judicial
`Resources
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`If the parties were to proceed to trial on February 3, 2020, the parties would be before the
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`Court again some time in the near future to try the 395 action which relates to the exact same
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`accused products. Trying the first case in February would cause the parties to unnecessarily incur
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`costs related to trying patent infringement cases against the same accused products twice.
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`Moreover, trial in the first case is unlikely to resolve the issues in a manner that would render trial
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`in the second case moot. Proceeding to trial on February 3 would also result in an inefficient use
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`of judicial resources. The Court would preside over two separate trials, empanel two separate
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`juries, conduct two separate pretrial conferences and review and rule on two full sets of pretrial
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`briefs.
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`Because the parties, products, and key legal and factual issues in the cases are the same,
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`Luminati proposes that the Court reset the trial setting for this case and hold a status conference to
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`discuss scheduling in the consolidated cases. Since much of the discovery relevant to the 395 action
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`litigations has been conducted, Luminati propose that the parties conduct a consolidate trial on all
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`cases in July of 2020.
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`D. Consolidation Would Not Prejudice Either Party
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`Consolidation would benefit all parties and the Court. Counsel for Plaintiff provided the
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`complaint in the 395 action to opposing counsel immediately upon its filing. Moreover, instead of
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`being forced to defend itself at two separate trials on the same accused product, resetting the trial
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`date to consolidate the cases and trial would avoid the potential for inconsistent results or rulings.
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`Moreover, due to the related nature of all of these cases, the parties will likely not need to engage
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`in extensive additional discovery and can litigate 395 action efficiently to maximize the benefit of
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`the discovery that has already been conducted. Luminati is not proposing a substantial delay in
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`time, but merely 5 months which should permit the parties to complete the claim construction
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`process on the newly issued patents and engage in any necessary additional fact and expert
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`discovery. The parties will not need to reinvent the wheel and this brief delay will not prejudice
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`either side.
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`IV. CONCLUSION
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`For the foregoing reasons, Luminati respectfully requests that the Court enter an order
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`consolidating this case with the 395 action for all purposes including trial, and resetting the trial
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`date in the consolidated cases at the Court’s earliest convenience after July 2020.
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`Dated: December 23, 2019
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`Respectfully submitted,
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`/s/ Korula T. Cherian
`S. Calvin Capshaw
`State Bar No. 03783900
`Elizabeth L. DeRieux
`State Bar No. 05770585
`Capshaw DeRieux, LLP
`114 E. Commerce Ave.
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`5
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`Gladewater, TX 75647
`Telephone: 903-845-5770
`ccapshaw@capshawlaw.com
`ederieux@capshawlaw.com
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`Korula T. Cherian
`Robert Harkins
`RuyakCherian LLP
`1936 University Ave, Suite. 350
`Berkeley, CA 94702
`sunnyc@ruyakcherian.com
`bobh@ruyakcherian.com
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`Amadou Kilkenny Diaw
`Corrine Saylor Davis
`Ronald Wielkopolski
`RuyakCherian LLP
`1700 K St. NW, Suite 810
`Washington, DC 20006
`amadoukd@ruyakcherian.com
`corrined@ruyakcherian.com
`ronw@ruyakcherian.com
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`ATTORNEYS FOR PLAINTIFF
`LUMINATI NETWORKS LTD.
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`CERTIFICATE OF SERVICE
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`I hereby certify that the all counsel of record who are deemed to have consented to
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`electronic service are being served this 23rd day of December 2019, with a copy of this document
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`via CM/ECF.
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`/s/ Korula T. Cherian
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`Korula T. Cherian
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that Robert Harkins, counsel for Plaintiff, and Steven Callahan, counsel for
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`Defendants, met and conferred on December 23, 2019 regarding the relief requested in this motion.
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`Defendants are opposed.
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`/s/ Korula T. Cherian
`Korula T. Cherian
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