`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:20-cv-00274-JRG
`(Lead Case)
`
`JURY TRIAL REQUESTED
`
`Case No. 2:20-cv-00335-JRG
`(Member Case)
`
`JURY TRIAL REQUESTED
`
`RFCYBER CORP.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`RFCYBER CORP.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`GOOGLE LLC’S RENEWED MOTION TO STAY PENDING RESOLUTION OF
`MOTION TO TRANSFER OR DISMISS
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 1 of 7
`
`
`
`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 2 of 7 PageID #: 2081
`
`
`
`I.
`
`INTRODUCTION
`
`Defendant Google LLC moves to stay all proceedings to permit the Court to resolve
`
`Google’s motion to dismiss or transfer this case to the Northern District of California. Dkt. 20.
`
`The transfer motion was filed more than eight months ago, on December 7, 2020, and the Court
`
`held a hearing on the motion almost two months ago on June 29, 2021.
`
`The Fifth Circuit and the Federal Circuit require courts to give “top priority” to transfer
`
`motions, In re Apple, 979 F.3d 1332, 1337 (Fed. Cir. 2020), and to resolve such motions “before
`
`addressing any substantive portion of the case,” In re Nintendo Co., Ltd., 544 F. App’x 934, 941
`
`(Fed. Cir. 2013). See also In re TracFone Wireless, Inc., 848 Fed. App’x 899, 900 (Fed. Cir.
`
`2021) (“[A] trial court’s failure to act on a fully briefed transfer motion that had been pending for
`
`approximately eight months while pressing forward with discovery and claim construction issues
`
`amounted to an arbitrary refusal to consider the merits of the transfer motion.”). Google seeks
`
`this stay as an appropriate means for the application of the “top priority” required by the Fifth
`
`Circuit and Federal Circuit.
`
`In this case, key deadlines are fast approaching—the completion of claim construction
`
`discovery is on September 2, 2021; Plaintiff’s opening claim construction brief is due on
`
`September 16, 2021, the same day that the parties must submit their technical tutorials; and the
`
`Markman hearing is scheduled for October 28, 2021. See Dkt. 63 (Docket Control Order). A
`
`stay is necessary to permit the Court to resolve the transfer or venue motion in advance of the
`
`completion of these substantive phases of the case. See, e.g., In re SK hynix Inc., 835 F. App’x
`
`600, 601 (Fed. Cir. 2021) (ordering a stay of proceedings where the district court “required the
`
`parties to proceed ahead with the merits” while a transfer motion “lingered unnecessarily on the
`
`docket”); In re TracFone, 848 Fed. App’x at 901 (ordering a district court to stay all proceedings
`
`
`
`
`
`1
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 2 of 7
`
`
`
`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 3 of 7 PageID #: 2082
`
`
`
`and rule on defendant’s transfer motion, where district court allowed case to proceed to a
`
`Markman hearing despite a pending transfer motion).
`
`II.
`
`ARGUMENT
`
`In addition to the guidance provided by the Fifth Circuit and Federal Circuit law, this
`
`Court considers three factors in deciding whether to stay a case: “whether discovery is complete
`
`and whether a trial date has been set,” “whether a stay will simplify the issues in question and
`
`trial of the case,” and “whether a stay will unduly prejudice or present a clear tactical
`
`disadvantage to the nonmoving party.” Glob. Equity Mgmt. (SA) Pty. Ltd. v. Ericsson, Inc., 2017
`
`WL 365398, at *10 (E.D. Tex. Jan. 25, 2017). Given the stage of the litigation, the potential to
`
`obviate duplicative discovery and adjudications in the transferee forum, and the lack of prejudice
`
`to Plaintiff, a brief stay is appropriate.
`
`A.
`
`The Early Stage of the Litigation Weighs in Favor of a Stay.
`
`A stay is appropriate when “there remains a significant amount of work ahead for the
`
`parties and the court,” although “[a] case need not be in its infancy to warrant a stay.” Norman
`
`IP Holdings, LLC v. TP-Link Techs., Co., No. 6:13-CV-384-JDL, 2014 WL 5035718, at *3 (E.D.
`
`Tex. Oct. 8, 2014). Although key deadlines are on the horizon, this case remains at a relatively
`
`early stage. The parties have responded to written discovery; have served their Patent Local
`
`Rule 4-1 and 4-2 claim construction disclosures; and have filed their Patent Local Rule 4-3 Joint
`
`Claim Construction and Prehearing Statement. But the most significant work will not occur for
`
`several more weeks, when the parties submit their technical tutorials (September 16), file their
`
`claim construction briefing (September 16 and September 30, respectively), and prepare for the
`
`Markman hearing (October 28). In addition, while the parties have noticed depositions, none
`
`have yet been scheduled.
`
`
`
`
`
`2
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 3 of 7
`
`
`
`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 4 of 7 PageID #: 2083
`
`
`
`The stage of the litigation thus supports a stay. The case is early enough that substantive
`
`issues have not been resolved. See Secure Axcess, LLC v. Nintendo of Am. Inc., No. 2:13-CV-
`
`32-JRG, Dkt. 133 at 1 (E.D. Tex. Feb. 10, 2014) (finding in a case where claim construction
`
`briefing had just begun that “a short stay pending resolution of the severance and transfer issues”
`
`likely would simplify issues in the case). And at the same time, staying the case before the
`
`upcoming deadlines, and before the parties begin litigating substantive issues, will ensure that
`
`the venue dispute takes top priority, as provided by Fifth Circuit and Federal Circuit precedents.
`
`B.
`
`A Stay Will Simplify and Streamline the Issues for Consideration.
`
`A stay also will simplify the issues before this Court. There is nothing left for this Court
`
`to decide should it determine that this case should be transferred to the Northern District of
`
`California or dismissed for improper venue. And there is little to be gained by allowing the case
`
`to proceed while the transfer motion remains pending. Because transfer is assessed based on the
`
`facts at the time of filing, any familiarity that this Court acquires with the underlying litigation
`
`due to the progress of the action is irrelevant to the transfer analysis. See In re Google Inc., No.
`
`2015-138, 2015 WL 5294800, at *2 (Fed. Cir. July 16, 2016). Staying the case will streamline
`
`the issues for consideration by ensuring that threshold issues are determined first.
`
`Without a stay, the parties will engage in litigation that may prove unnecessary or
`
`duplicative. For example, as discussed above, deadlines relevant to claim construction are fast
`
`approaching, and the Federal Circuit has held that venue motions must be resolved in advance of
`
`claim construction issues. See In re SK hynix, 835 F. App’x at 601; In re TracFone, 848 Fed.
`
`App’x at 901. Moreover, any claim construction order issued prior to transfer would be subject
`
`to revision in the transferee court. See, e.g., Rambus Inc. v. Hynix Semiconductor Inc., 569 F.
`
`Supp. 2d 946, 968 (N.D. Cal. 2008) (declining to give preclusive effect to claim construction
`
`order absent a final judgment); Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352,
`
`
`
`
`
`3
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 4 of 7
`
`
`
`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 5 of 7 PageID #: 2084
`
`
`
`1361 (Fed. Cir. 2002) (acknowledging that district courts may engage in “rolling” claim
`
`construction and “revisit[ ] and alter[ ] its interpretation” of the patentee’s claims throughout the
`
`litigation).
`
`C.
`
`A Stay Will Not Prejudice or Disadvantage Plaintiff.
`
`Finally, a stay will not prejudice or impose any tactical disadvantage on Plaintiff.
`
`Google’s proposed stay is limited to the time necessary to resolve the transfer motion, which has
`
`been pending for more than eight months. Any stay likely will be brief. Proceeding to the merits
`
`while Google’s motion remains pending benefits neither party. A short stay will benefit Plaintiff
`
`as much as Google by eliminating the need to spend time and resources litigating substantive
`
`issues prior to the Court’s decision as to whether and where the litigation should proceed.
`
`Moreover, a stay will not impair Plaintiff’s ability to secure effective relief in this case
`
`should it ultimately prevail. Plaintiff seeks only money damages for the alleged infringement,
`
`not injunctive relief. In addition, Plaintiff does not allege that it currently offers a competing
`
`product that embodies the patents-in-suit, or that it otherwise suffers ongoing harm in the
`
`marketplace because of the alleged infringement. See Spa Syspatronic, AG v. Verifone, Inc., No.
`
`07-416, 2008 WL 1886020, at *2 (E.D. Tex. Apr. 25, 2008) (finding that the parties were not
`
`direct competitors and that a stay was therefore “unlikely to directly prejudice [patentee’s]
`
`standing in the market” during the delay). As a result, a stay pending resolution of the transfer
`
`motion “will not diminish the monetary damages to which [Plaintiff] will be entitled if it
`
`succeeds in its infringement suit—it only delays realization of those damages[.]” VirtualAgility
`
`Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). Under these circumstances,
`
`Plaintiff’s interest in avoiding delay in the vindication of its patent rights—an interest “present in
`
`every case in which a patentee resists a stay”—cannot alone defeat this stay motion. NFC Tech.
`
`
`
`
`
`4
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 5 of 7
`
`
`
`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 6 of 7 PageID #: 2085
`
`
`
`LLC v. HTC Am., Inc., No. 2:13-CV-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11,
`
`2015).
`
`Because all relevant factors favor relief, Google requests a short stay pending resolution
`
`of Google’s transfer or dismissal motion.
`
`
`Dated: August 27, 2021
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`/s/ Zachary M. Briers with permission,
`
`by Michael E. Jones
`
`Michael E. Jones
`Texas Bar No. 10929400
`POTTER MINTON, PC
`110 North College, Suite 500
`Tyler, TX 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 993-0846
`mikejones@potterminton.com
`
`OF COUNSEL:
`
`Zachary M. Briers (pro hac vice)
`Heather E. Takahashi (pro hac vice)
`Vincent Y. Ling (pro hac vice)
`Robin S. Gray (pro hac vice)
`MUNGER, TOLLES & OLSON LLP
`350 South Grand Avenue, Fiftieth Floor
`Los Angeles, California 90071-3426
`Telephone: (213) 683-9100
`Facsimile: (213) 687-3702
`zachary.briers@mto.com
`heather.takahashi@mto.com
`vinny.ling@mto.com
`robin.gray@mto.com
`
`ATTORNEYS FOR DEFENDANT
`GOOGLE LLC
`
`5
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 6 of 7
`
`
`
`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 7 of 7 PageID #: 2086
`
`
`
`CERTIFICATE OF CONFERENCE
`
`On August 26, 2021, pursuant to Local Rule CV-7(h), counsel for Defendants met and
`
`conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed
`
`to the relief sought by this Motion.
`
`
`Dated: August 27, 2021
`
`/s/ Zachary M. Briers
` By: Zachary M. Briers
`
`
`
`
`
`
`GOOG-1035 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 7 of 7
`
`