Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 1 of 7 PageID #: 2080
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:20-cv-00274-JRG
`(Lead Case)
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`JURY TRIAL REQUESTED
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`Case No. 2:20-cv-00335-JRG
`(Member Case)
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`JURY TRIAL REQUESTED
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`RFCYBER CORP.,
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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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`RFCYBER CORP.,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Defendants.
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`GOOGLE LLC’S RENEWED MOTION TO STAY PENDING RESOLUTION OF
`MOTION TO TRANSFER OR DISMISS
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`GOOG-1035 / IPR2021-00956
`GOOGLE LLC v. RFCYBER CORP. / Page 1 of 7
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`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 2 of 7 PageID #: 2081
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`I.
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`INTRODUCTION
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`Defendant Google LLC moves to stay all proceedings to permit the Court to resolve
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`Google’s motion to dismiss or transfer this case to the Northern District of California. Dkt. 20.
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`The transfer motion was filed more than eight months ago, on December 7, 2020, and the Court
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`held a hearing on the motion almost two months ago on June 29, 2021.
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`The Fifth Circuit and the Federal Circuit require courts to give “top priority” to transfer
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`motions, In re Apple, 979 F.3d 1332, 1337 (Fed. Cir. 2020), and to resolve such motions “before
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`addressing any substantive portion of the case,” In re Nintendo Co., Ltd., 544 F. App’x 934, 941
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`(Fed. Cir. 2013). See also In re TracFone Wireless, Inc., 848 Fed. App’x 899, 900 (Fed. Cir.
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`2021) (“[A] trial court’s failure to act on a fully briefed transfer motion that had been pending for
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`approximately eight months while pressing forward with discovery and claim construction issues
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`amounted to an arbitrary refusal to consider the merits of the transfer motion.”). Google seeks
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`this stay as an appropriate means for the application of the “top priority” required by the Fifth
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`Circuit and Federal Circuit.
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`In this case, key deadlines are fast approaching—the completion of claim construction
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`discovery is on September 2, 2021; Plaintiff’s opening claim construction brief is due on
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`September 16, 2021, the same day that the parties must submit their technical tutorials; and the
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`Markman hearing is scheduled for October 28, 2021. See Dkt. 63 (Docket Control Order). A
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`stay is necessary to permit the Court to resolve the transfer or venue motion in advance of the
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`completion of these substantive phases of the case. See, e.g., In re SK hynix Inc., 835 F. App’x
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`600, 601 (Fed. Cir. 2021) (ordering a stay of proceedings where the district court “required the
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`parties to proceed ahead with the merits” while a transfer motion “lingered unnecessarily on the
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`docket”); In re TracFone, 848 Fed. App’x at 901 (ordering a district court to stay all proceedings
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`1
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`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 3 of 7 PageID #: 2082
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`and rule on defendant’s transfer motion, where district court allowed case to proceed to a
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`Markman hearing despite a pending transfer motion).
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`II.
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`ARGUMENT
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`In addition to the guidance provided by the Fifth Circuit and Federal Circuit law, this
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`Court considers three factors in deciding whether to stay a case: “whether discovery is complete
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`and whether a trial date has been set,” “whether a stay will simplify the issues in question and
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`trial of the case,” and “whether a stay will unduly prejudice or present a clear tactical
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`disadvantage to the nonmoving party.” Glob. Equity Mgmt. (SA) Pty. Ltd. v. Ericsson, Inc., 2017
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`WL 365398, at *10 (E.D. Tex. Jan. 25, 2017). Given the stage of the litigation, the potential to
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`obviate duplicative discovery and adjudications in the transferee forum, and the lack of prejudice
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`to Plaintiff, a brief stay is appropriate.
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`A.
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`The Early Stage of the Litigation Weighs in Favor of a Stay.
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`A stay is appropriate when “there remains a significant amount of work ahead for the
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`parties and the court,” although “[a] case need not be in its infancy to warrant a stay.” Norman
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`IP Holdings, LLC v. TP-Link Techs., Co., No. 6:13-CV-384-JDL, 2014 WL 5035718, at *3 (E.D.
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`Tex. Oct. 8, 2014). Although key deadlines are on the horizon, this case remains at a relatively
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`early stage. The parties have responded to written discovery; have served their Patent Local
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`Rule 4-1 and 4-2 claim construction disclosures; and have filed their Patent Local Rule 4-3 Joint
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`Claim Construction and Prehearing Statement. But the most significant work will not occur for
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`several more weeks, when the parties submit their technical tutorials (September 16), file their
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`claim construction briefing (September 16 and September 30, respectively), and prepare for the
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`Markman hearing (October 28). In addition, while the parties have noticed depositions, none
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`have yet been scheduled.
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`2
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`The stage of the litigation thus supports a stay. The case is early enough that substantive
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`issues have not been resolved. See Secure Axcess, LLC v. Nintendo of Am. Inc., No. 2:13-CV-
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`32-JRG, Dkt. 133 at 1 (E.D. Tex. Feb. 10, 2014) (finding in a case where claim construction
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`briefing had just begun that “a short stay pending resolution of the severance and transfer issues”
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`likely would simplify issues in the case). And at the same time, staying the case before the
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`upcoming deadlines, and before the parties begin litigating substantive issues, will ensure that
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`the venue dispute takes top priority, as provided by Fifth Circuit and Federal Circuit precedents.
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`B.
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`A Stay Will Simplify and Streamline the Issues for Consideration.
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`A stay also will simplify the issues before this Court. There is nothing left for this Court
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`to decide should it determine that this case should be transferred to the Northern District of
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`California or dismissed for improper venue. And there is little to be gained by allowing the case
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`to proceed while the transfer motion remains pending. Because transfer is assessed based on the
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`facts at the time of filing, any familiarity that this Court acquires with the underlying litigation
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`due to the progress of the action is irrelevant to the transfer analysis. See In re Google Inc., No.
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`2015-138, 2015 WL 5294800, at *2 (Fed. Cir. July 16, 2016). Staying the case will streamline
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`the issues for consideration by ensuring that threshold issues are determined first.
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`Without a stay, the parties will engage in litigation that may prove unnecessary or
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`duplicative. For example, as discussed above, deadlines relevant to claim construction are fast
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`approaching, and the Federal Circuit has held that venue motions must be resolved in advance of
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`claim construction issues. See In re SK hynix, 835 F. App’x at 601; In re TracFone, 848 Fed.
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`App’x at 901. Moreover, any claim construction order issued prior to transfer would be subject
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`to revision in the transferee court. See, e.g., Rambus Inc. v. Hynix Semiconductor Inc., 569 F.
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`Supp. 2d 946, 968 (N.D. Cal. 2008) (declining to give preclusive effect to claim construction
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`order absent a final judgment); Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352,
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`3
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`1361 (Fed. Cir. 2002) (acknowledging that district courts may engage in “rolling” claim
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`construction and “revisit[ ] and alter[ ] its interpretation” of the patentee’s claims throughout the
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`litigation).
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`C.
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`A Stay Will Not Prejudice or Disadvantage Plaintiff.
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`Finally, a stay will not prejudice or impose any tactical disadvantage on Plaintiff.
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`Google’s proposed stay is limited to the time necessary to resolve the transfer motion, which has
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`been pending for more than eight months. Any stay likely will be brief. Proceeding to the merits
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`while Google’s motion remains pending benefits neither party. A short stay will benefit Plaintiff
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`as much as Google by eliminating the need to spend time and resources litigating substantive
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`issues prior to the Court’s decision as to whether and where the litigation should proceed.
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`Moreover, a stay will not impair Plaintiff’s ability to secure effective relief in this case
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`should it ultimately prevail. Plaintiff seeks only money damages for the alleged infringement,
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`not injunctive relief. In addition, Plaintiff does not allege that it currently offers a competing
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`product that embodies the patents-in-suit, or that it otherwise suffers ongoing harm in the
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`marketplace because of the alleged infringement. See Spa Syspatronic, AG v. Verifone, Inc., No.
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`07-416, 2008 WL 1886020, at *2 (E.D. Tex. Apr. 25, 2008) (finding that the parties were not
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`direct competitors and that a stay was therefore “unlikely to directly prejudice [patentee’s]
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`standing in the market” during the delay). As a result, a stay pending resolution of the transfer
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`motion “will not diminish the monetary damages to which [Plaintiff] will be entitled if it
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`succeeds in its infringement suit—it only delays realization of those damages[.]” VirtualAgility
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`Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). Under these circumstances,
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`Plaintiff’s interest in avoiding delay in the vindication of its patent rights—an interest “present in
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`every case in which a patentee resists a stay”—cannot alone defeat this stay motion. NFC Tech.
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`4
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`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 6 of 7 PageID #: 2085
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`LLC v. HTC Am., Inc., No. 2:13-CV-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11,
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`2015).
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`Because all relevant factors favor relief, Google requests a short stay pending resolution
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`of Google’s transfer or dismissal motion.
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`Dated: August 27, 2021
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`Respectfully submitted,
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`By:
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`/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:
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`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
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`5
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`Case 2:20-cv-00274-JRG Document 103 Filed 08/27/21 Page 7 of 7 PageID #: 2086
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`CERTIFICATE OF CONFERENCE
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`On August 26, 2021, pursuant to Local Rule CV-7(h), counsel for Defendants met and
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`conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed
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`to the relief sought by this Motion.
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`Dated: August 27, 2021
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`/s/ Zachary M. Briers
` By: Zachary M. Briers
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`GOOG-1035 / IPR2021-00956
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