Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 1 of 7 PageID 270
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
`
`Civil Action No. 12-cv-02824-JPM-cgc
`
`JURY TRIAL DEMANDED
`
`SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
`
`
`
`Defendant.
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA
`INC.,
`
`
`
`
`
`Defendant.
`
`Civil Action No. 12-cv-02825-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANTS SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
`SAMSUNG ELECTRONICS AMERICA INC.’S MOTION TO STAY PENDING
`RESOLUTION OF SAMSUNG’S MOTIONS TO TRANSFER TO THE DISTRICT OF
`NEW JERSEY
`
`Defendants Samsung Electronics America, Inc. (“SEA”) and Samsung
`
`Telecommunications America, LLC (“STA”, collectively, with SEA, “Samsung”) respectfully
`
`move this Court for a stay of the proceedings pending the Court’s ruling on the Motions to
`
`Transfer Venue Pursuant to 28 U.S.C. § 1404(a) (“Motions to Transfer”). Absent a stay, the
`
`Court and the parties will likely expend significant resources that they might otherwise not need
`
`to expend if Samsung’s motion is granted. For example, by February 21, 2013, Samsung must
`
`respond to more than 10,000 pages of vague infringement contentions and produce related
`
`documents pursuant to Local Patent Rules 3.3 and 3.4. However, should the Court grant
`
`
`
`-1-
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 2 of 7 PageID 271
`
`Samsung’s motions to transfer, this response would be unnecessary and thus highly prejudicial.
`
`On the other hand, Plaintiff B.E. Technology, Inc. (“B.E. Technology” or “Plaintiff”) will suffer
`
`no prejudice as a result of a brief stay. Indeed, the Court of Appeals for the Federal Circuit
`
`recently endorsed the stay of patent proceedings pending resolution of a motion to transfer. See
`
`In re Fusion-IO, Inc., Misc. Dkt. No. 139, 2012 WL 6634939, at *1 (Fed. Cir. Dec. 21, 2012)
`
`(suggesting that on remand, Fusion-IO file a motion to transfer as well as a motion to stay
`
`pending disposition of the transfer motion, “and for the district court to act on those motions
`
`before proceeding to any motion on the merits of the action.”).
`
`Accordingly, to serve the convenience of the parties and the interests of justice, it is
`
`respectfully submitted that the Court should enter a brief stay of all deadlines pending the
`
`resolution of Samsung’s motions to transfer.
`
`I.
`
`FACTUAL BACKGROUND
`
`These cases are at a very early stage. Plaintiff filed its complaints on September 21, 2012
`
`accusing 11 products in only 2 product categories (Smart TVs and DVDs) of infringing U.S.
`
`Patent No. 6,771,290 (“the ’290 patent”). (See D.E. 1.1) Samsung filed its answers on
`
`December 31, 2012. (D.E. 22.)
`
`On January 7, 2013, Plaintiff served its Preliminary Infringement Contentions (“PICs”)
`
`which comprise more than 10,000 pages and have been materially expanded to identify
`
`approximately 177 accused products (from 11 products in the complaints) in 8 product categories
`
`(from 2 product categories in the complaints), including cameras, home theater systems, media
`
`players, personal computers, phones and tablets, along with “all reasonably similar products
`
`
`1 Unless otherwise noted, all docket entries reference Case No. 12-cv-2824-JPM-cgc.
`-2-
`
`
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 3 of 7 PageID 272
`
`and/or services.” The PICs also identify 19 separate accused functionalities, one or more of
`
`which are alleged to be present or used in each accused product.2
`
`On January 22, 2013, Samsung filed a Motion to Transfer Venue to the District of New
`
`Jersey. (D.E. 27.) Samsung’s Memorandum in Support of its motion (D.E. 27.1) (the
`
`“Memorandum”) demonstrates that this forum is inconvenient for the parties, given the location
`
`of relevant information and witnesses. (See Memorandum at 3-4 (location of Samsung witnesses
`
`and information); id. at 5 (location of third-party witnesses and information).) In addition,
`
`Plaintiff appears to have no relevant connection to this district other than it being the location of
`
`a single employee. (Id. at 4-5.)
`
`The patent-in-suit in this case is also the subject of a motion to dismiss on invalidity
`
`grounds filed by Amazon in B.E. Tech., LLC v. Amazon Digital Services, Inc., 12-cv-02767
`
`JPM-tmp. (See D.E. 32.) That motion, if successful, would be dispositive of all issues in these
`
`cases against Samsung.
`
`II.
`
`ARGUMENT
`
`A.
`
`Legal Standard
`
`“[T]he power to stay proceedings is incidental to the power inherent in every court to
`
`control the disposition of the causes on its docket with economy of time and effort for itself, for
`
`counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). In deciding whether
`
`to stay a proceeding, the Court “must weigh competing interests and maintain an even balance.”
`
`Id. at 254–55. Specifically, the Court “must first identify a pressing need for the stay[, and]
`
`…then balance interests favoring a stay against interests frustrated by the action.” Cherokee
`
`
`2 These accused functionalities include Google software/services (e.g., Android Market, YouTube, and Google
`Play), Samsung software/services (e.g., Samsung Apps, Smart Hub, Media Hub, Music Hub), Microsoft
`software/services (e.g., Windows Store, Xbox Video, Xbox Music, Xbox Games, Windows Phone Marketplace,
`Windows Phone Store), Amazon software/services (e.g., Amazon (Prime) Instant Video, Kindle Store), and
`miscellaneous other software/services (e.g., Netflix, Hulu Plus, Nook Store (B&N), Kno Textbooks).
`-3-
`
`
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 4 of 7 PageID 273
`
`Nation of Okla. v. United States, 124 F.3d 1413, 1416 (Fed. Cir. 1997). Courts have considered
`
`competing interests to include “the possible damage which may result from the granting of a
`
`stay, the hardship or inequity which a party may suffer in being required to go forward, and the
`
`orderly course of justice measured in terms of the simplifying or complicating of issues, proof,
`
`and questions of law which could be expected to result from a stay.” Cmax, Inc. v. Hall, 300
`
`F.2d 265, 268 (9th Cir. 1962). As discussed above, the Federal Circuit has endorsed staying
`
`proceedings pending resolution of a motion to transfer. See, e.g., In re Fusion-IO, 2012 WL
`
`6634939, at *1.
`
`B.
`
`The Relevant Factors Weigh in Favor of Granting a Stay
`
`As discussed above, the deadline for Samsung to respond to plaintiff’s PICs, and to
`
`produce related documents, is February 21, 2013.3 Responding to those contentions and
`
`producing the documents will impose a significant burden on Samsung. To the extent
`
`understood, Plaintiff’s contentions have been materially expanded to over 10,000 pages and now
`
`target 177 products, including software developed by numerous third parties. (See supra at 2.)
`
`Therefore, responding to those contentions will require investigation into not only the products
`
`and software of Samsung, but into third-party software as well. In addition, as explained in a
`
`letter from Samsung to Plaintiff (see Jan. 18, 2013 letter between counsel, attached hereto as
`
`Exhibit A), to which Plaintiff has yet to substantively respond,4 Plaintiff’s contentions fail to
`
`satisfy the requirements of Local Patent Rule 3.1, thereby making it even more difficult for
`
`Samsung to respond and produce documents as required by Local Patent Rules 3.3 and 3.4. For
`
`example, plaintiff has accused products exclusively sold abroad of infringing the asserted U.S.
`
`3 The original deadline was February 7, 2013. In response to a request by Samsung for an extension of time to April
`1, 2013, Plaintiff responded that it would agree to only a two-week extension of time, i.e., up to an including
`February 21, 2013.
`4 On Wednesday, January 23, 2013, Counsel for Plaintiff acknowledged, via email, receipt of this letter and stated
`that Plaintiff would respond to the substance of the letter by “early next week.” Then, on Friday, January 25, 2013,
`Plaintiff filed a motion to strike the affirmative defenses against each of the Samsung defendants. (D.E. 29).
`-4-
`
`
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 5 of 7 PageID 274
`
`patent claims, failed to identify components or functionality that allegedly meets various claim
`
`limitations, and failed to provide specific evidence as to other claim limitations that purportedly
`
`exist somewhere in the accused products. A brief stay will afford the parties an opportunity to
`
`address these deficiencies without judicial intervention. Moreover, a brief stay might provide the
`
`Court an opportunity to decide Amazon’s motion to dismiss which, if granted, would completely
`
`resolve the present cases against Samsung. For at least these reasons, Samsung will suffer
`
`hardship if this case is not stayed, which would be contrary to the intention of the transfer statute,
`
`28 U.S.C. 1404(a), to “prevent the waste of time, energy and money to protect litigants,
`
`witnesses and the public against unnecessary inconvenience and expense.” Van Dusen v.
`
`Barrack, 376 U.S. 612, 616 (1964) (internal citations omitted).
`
`On the other hand, Plaintiff would suffer no prejudice if the Court were to grant a brief
`
`stay. The Court has not yet scheduled a patent scheduling conference and Plaintiff has served no
`
`discovery beyond its PICs. In short, granting a brief stay would have the limited effect of
`
`moving the deadlines relating to contentions back a few weeks.
`
`Finally, the orderly course of justice counsels toward a stay pending resolution of
`
`Samsung’s transfer motions. No issues will become more complex as a result of a brief stay.
`
`Indeed, the parties and the Court would benefit from clarity regarding where this case will
`
`proceed before engaging in significant and costly discovery regarding the presently accused
`
`products.
`
`III. CONCLUSION
`
`The District of New Jersey is the more convenient forum for litigation of this dispute, and
`
`Samsung’s motions to transfer should be granted. Given that discovery is largely, if not
`
`completely, irrelevant to the question of whether a case should be transferred, and in view of the
`
`significant burdens that would be imposed on Samsung in the near future absent a stay, it is
`-5-
`
`
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 6 of 7 PageID 275
`
`respectfully submitted that this Court should grant a brief stay pending resolution of Samsung’s
`
`Motions to Transfer.
`
`DATE:
`
`January 29, 2013
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Jonathan E. Nelson
`Shepherd D. Tate (TN BPR #05638)
`Jonathan E. Nelson (TN BPR #028029)
`BASS, BERRY & SIMS, PLC
`100 Peabody Place, Suite 900
`Memphis, Tennessee 38103
`Telephone: (901) 543-5900
`Facsimile:
`(901) 543-5999
`Email:
`state@bassberry.com
`
`jenelson@bassberry.com
`
`Richard C. Pettus (admitted pro hac vice)
`Joshua Raskin (admitted pro hac vice)
`Justin A. MacLean (admitted pro hac vice)
`GREENBERG TRAURIG, LLP
`200 Park Avenue
`New York, NY 10166
`Telephone:
`(212) 801-9200
`Facsimile:
`(212) 801-6400
`pettusr@gtlaw.com
`Email:
`
`
`raskinj@gtlaw.com
`
`
`macleanj@gtlaw.com
`
`Attorneys for Defendants, Samsung Electronics
`America, Inc. and Samsung Telecommunications
`America, LLC
`
`-6-
`
`
`
`
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 35 Filed 01/29/13 Page 7 of 7 PageID 276
`
`CERTIFICATE OF CONSULTATION
`
`
`I, Jonathan Nelson, attorney for Defendants Samsung Electronics America, Inc. and
`
`Samsung Telecommunications America, LLC, certify that I communicated with Counsel for
`
`Plaintiff, Craig Kaufman, on January 24, 2013 via email regarding Defendants’ intention to file
`
`the foregoing Motion, and conferred with him to determine whether the Plaintiff would agree to
`
`the relief sought, such that the Motion could be presented as unopposed. Mr. Kaufman advised
`
`that the Plaintiff opposes the Motion.
`
`
`
` /s/ Jonathan Nelson
`Jonathan Nelson
`
`
`
`CERTIFICATE OF SERVICE
`
`The foregoing document was filed under the Court’s CM/ECF system, automatically
`
`
`
`effecting service on counsel of record for all other parties who have appeared in this action on
`
`the date of such service.
`
` /s/ Jonathan Nelson
`
`
`
`-7-
`
`
`
`
`
`
`
`11543148.2