Case 6:20-cv-00804-ADA Document 37 Filed 01/25/21 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`EXPRESS MOBILE, INC.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`Civil Action No. 6:20-cv-00804-ADA
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`DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO STAY PENDING
`RESOLUTION OF ITS TRANSFER MOTION
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`Defendant Google LLC (“Google”) respectfully requests a brief stay of all proceedings
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`pending resolution of its transfer motion. As explained in Google’s transfer motion, the facts in
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`this case compellingly demonstrate that the Northern District of California (“NDCA”) is much
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`more convenient for both Plaintiff and Google. See Dkt. No. 35 (filed Jan. 25, 2021). A stay
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`would promote efficiency and judicial economy by addressing the threshold issue of venue before
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`the parties and the Court expend significant resources on substantive aspects of the case.
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`“In determining whether a stay is proper, a district court should consider, among other
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`factors, (1) the potential prejudice to the non-moving party; (2) the hardship and inequity to the
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`moving party if the action is not stayed; and (3) judicial resources.” Neodron Ltd. v. Dell Techs.,
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`No. 1-19-cv-00819, 2019 WL 9633629, at *1 (W.D. Tex. Dec. 16, 2019) (Albright, J.) (citing Yeti
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`Coolers, LLC v. Home Depot U.S.A., Inc., No. 1:17-cv-342, 2018 WL 2122868, at *1 (W.D. Tex.
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`Jan. 8, 2018) (Pitman, J.).) Here, all relevant legal factors favor the stay.
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`GOOGLE EXHIBIT 1043
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`Case 6:20-cv-00804-ADA Document 37 Filed 01/25/21 Page 2 of 5
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`1.
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`A Stay Will Not Prejudice Plaintiff.
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`Plaintiff will not suffer any prejudice. Google’s proposed stay is limited to the time
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`required for briefing and resolution of the transfer motion. Plaintiff does not compete with Google
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`on the market, and it does not seek injunctive relief. (Dkt. No. 32 ¶¶ 149-156.) Accordingly,
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`Plaintiff will not suffer any prejudice because it can be remedied by money damages for the stay
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`period if the patents are found valid and infringed. See, e.g., Uniloc 2017 v. LG Elecs. U.S.A., No.
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`3:1-cv-03071-N, 2020 WL 374545, at *1 (N.D. Tex. Jan. 23, 2020) (granting stay where parties
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`were not direct competitors).
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`Additionally, Plaintiff would not be prejudiced because the case is in its infancy. Plaintiff
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`has not requested any discovery. The Court set a trial date just one business day ago, and asked
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`the parties to jointly propose a scheduling order by February 26, 2021. Discovery has not yet
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`opened, the Markman hearing will not take place until August 3, 2021, and the estimated trial date
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`is September 12, 2022.
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`Finally, as set forth in Google’s transfer motion, Plaintiff would suffer no prejudice because
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`it previously asserted the same patents in the NDCA. X.Commerce, Inc. v. Express Mobile, Inc.,
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`No. 3:17-cv-02605-RS (NDCA); Express Mobile, Inc. v. Code & Theory LLC, No. 3:18-cv-04679-
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`RS (NDCA); Express Mobile, Inc. v. Pantheon Sys., Inc., No. 3:18-cv-04688-RS (NDCA);
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`Express Mobile, Inc. v. Wix.com, Ltd. et al., No. 3:19-cv-06559-RS (NDCA). Indeed, Plaintiff is
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`headquartered in the NDCA, which is also where the named inventor of the patents-in-suit (who
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`is also the founder, current CTO, and former CEO of the plaintiff), Steven Rempell, is located.
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`Google’s witnesses, Google’s relevant sources of proof, and other relevant third-party witnesses
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`are also mostly located in California, with none in Texas. Also, a stay would not prejudice Plaintiff
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`because this case is in its infancy.
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`Case 6:20-cv-00804-ADA Document 37 Filed 01/25/21 Page 3 of 5
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`2.
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`Google Will Suffer Hardship Absent A Stay.
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`Google will suffer unnecessary hardship from spending resources on Markman
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`proceedings and claim-construction-related discovery (which will begin around April 2021), and
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`preliminary invalidity contentions (which will be due around April 2021). Furthermore, invalidity
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`contentions and claim construction would likely differ under the rules of another district and judge.
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`For example, for claim construction, this Court presumptively limits the number of terms, whereas
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`NDCA has no such limit. Compare Albright Order Governing Proceedings—Patent Case Version
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`3.2 at 4, with NDCA Patent L.R. 4. As another example, this Court requires preliminary invalidity
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`contentions seven weeks after the case management conference, whereas in NDCA, they are not
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`due until 59 days after the initial case management conference. Compare Albright Order
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`Governing Proceedings—Patent Case Version 3.2 at 2, with NDCA Patent L.R. 3-3.
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`3.
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`A Stay Pending Resolution Of The Transfer Motion Will Conserve Judicial
`Resources.
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`A stay will conserve judicial resources by avoiding the time-intensive tasks of a Markman
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`hearing and claim construction order. Indeed, conducting such proceedings in this District would
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`be duplicative because the NDCA court previously conducted claim construction proceedings and
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`construed the terms. X.Commerce, Inc. v. Express Mobile, Inc., No. 3:17-cv-02605-RS, 2018 WL
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`10704439 (N.D. Cal. Sept. 12, 2018). There is no reason for this Court to duplicate that effort if
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`the case will be transferred to the NDCA.
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`Accordingly, all relevant factors favor a stay. For at least these reasons, Google’s pending
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`transfer motion should take priority, and Google respectfully requests a short stay pending a
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`decision on it.
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`Case 6:20-cv-00804-ADA Document 37 Filed 01/25/21 Page 4 of 5
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`Respectfully submitted,
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` /s/ Ameet A. Modi
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`MANN, TINDEL, THOMPSON
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`J. Mark Mann
`State Bar No. 12926150
`mark@themannfirm.com
`G. Blake Thompson
`State Bar No. 24042033
`blake@themannfirm.com
`MANN | TINDEL | THOMPSON
`201 E. Howard St.
`Henderson, Texas 75654
`Telephone: 903-657-8540
`Facsimile: 903-657-6003
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`DESMARAIS LLP
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`Ameet A. Modi (pro hac vice)
`Emily H. Chen (pro hac vice)
`101 California Street
`San Francisco, California 94111
`T: (415) 573-1900
`F: (415) 573-1901
`amodi@desmaraisllp.com
`echen@desmaraisllp.com
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`Karim Z. Oussayef (pro hac vice)
`230 Park Avenue
`New York, New York 10169
`T: (212) 351-3400
`F: (212) 351-3401
`koussayef@desmaraisllp.com
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`Attorneys for Defendant Google LLC
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`Dated: January 25, 2021
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`Case 6:20-cv-00804-ADA Document 37 Filed 01/25/21 Page 5 of 5
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(i), counsel for Defendant, Google LLC, conferred with
`counsel for Plaintiff, Express Mobile, Inc. on January 22, 2021 in a good-faith effort to resolve
`the matter presented herein and counsel for Plaintiff stated that it opposed the motion.
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`/s/ Ameet A. Modi
`Ameet A. Modi
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
`being served with a copy of this document via CM/ECF on January 25, 2021. I also hereby
`certify that all counsel of record who have consented to electronic service are being served with a
`notice of filing this document, pursuant to L.R. CV-5.2 on January 25, 2021.
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`/s/ Ameet A. Modi
`Ameet A. Modi
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