Case 2:12-cv-02828-JPM-tmp Document 27-1 Filed 02/07/13 Page 1 of 4 PageID 117
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
`
`Civil Action No. 12-cv-02826-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`SONY COMPUTER ENTERTAINMENT
`AMERICA, LLC,
`
`
`
`Defendant.
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
`
`Civil Action No. 12-cv-02827-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`SONY MOBILE COMMUNICATIONS
`(U.S.A.) INC.,
`
`
`
`Defendant.
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
`
`SONY ELECTRONICS INC.
`
`Civil Action No. 12-cv-02828-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`Defendant.
`
`
`DEFENDANTS SONY COMPUTER ENTERTAINMENT AMERICA LLC, SONY
`MOBILE COMMUNICATIONS (U.S.A.) INC., AND SONY ELECTRONICS INC.’S
`MEMORANDUM IN SUPPORT OF THEIR MOTION TO STAY PROCEEDINGS
`PENDING RESOLUTION OF THE MOTIONS TO TRANSFER TO THE U.S.
`DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`Defendants Sony Computer Entertainment America LLC (“SCEA”), Sony Mobile
`
`Communications (U.S.A.) Inc. (“SoMC”), and Sony Electronics Inc. (“SEL”) (collectively,
`
`“Sony”) respectfully submit this memorandum in support of their motion for a stay of the
`
`
`
`

`
`Case 2:12-cv-02828-JPM-tmp Document 27-1 Filed 02/07/13 Page 2 of 4 PageID 118
`
`
`proceedings in each of the above captioned cases pending the Court’s ruling on the motions to
`
`transfer those cases to the U.S. District Court for the Northern District of California. Sony
`
`makes this motion because it is appropriate to allow a pending motion to transfer to be decided
`
`before proceeding with discovery, as has been recognized by the Third, Fifth, and Federal
`
`Circuits. In this district, in the absence of a stay, that discovery includes the need for Sony to
`
`digest and respond to nearly four thousands of pages of Plaintiff’s Preliminary Infringement
`
`Contentions and to respond to those contentions and to produce related documents.
`
`To eliminate the necessity of this Court reviewing what would otherwise be substantially
`
`duplicative legal argument, the law supporting this relief is set forth in detail in the memorandum
`
`and exhibits supporting the motion to stay filed in a related action by defendant Facebook, Inc.
`
`(“Facebook”), Case No. 2:12-cv-02769-JPM-tmp, Doc. 37, and Sony incorporates that
`
`memorandum and its exhibits by reference.
`
`As noted in Facebook’s motion, the Federal Circuit has endorsed staying proceedings
`
`pending the 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; non-precedential) (suggesting that on remand,
`
`Fusion-IO file a motion to transfer as well as “a motion to stay proceedings 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.”). Moreover, while there is no Sixth Circuit case on the issue,
`
`other Circuit Courts have recognized that motions to transfer should be decided without delay,
`
`and before proceeding with discovery. McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 31 (3d
`
`Cir. 1970); see also In re Horseshoe Entertainment, 337 F.3d 429, 433 (5th Cir. 2003).
`
`On January 28, 2013, SCEA, SoMC and SEL each filed Motions to Transfer Venue to the
`
`Northern District of California. Case Nos. 2:12-cv-02826-JPM-tmp, Doc. 25; 2:12-cv-02827-
`
`-2-
`
`

`
`Case 2:12-cv-02828-JPM-tmp Document 27-1 Filed 02/07/13 Page 3 of 4 PageID 119
`
`
`JPM-tmp, Doc. 29; 2:12-cv-02828-JPM-tmp, Doc. 24. SCEA’s Memorandum in Support of its
`
`motion demonstrates that there are strong factors in favor of transfer, including (i) the
`
`inconvenience to the parties, given the location of relevant information, the defendants, and the
`
`witnesses (Case No. 2:12-cv-02826-JPM-tmp, Doc. 27-1 at pp. 4-11), and (ii) the Plaintiff’s
`
`weak connection to this district. Id. at 7-8.
`
`Without a stay, Sony will be tasked with responding to 3,980 pages of infringement
`
`contentions against each of SCEA, SoMC, and SEL, as well as producing related documents
`
`pursuant to Local Patent Rules 3.3 and 3.4 by February 21, 2013.1 The nearly 4,000 pages of
`
`Preliminary Infringement Contentions (“PICS”) have materially expanded the scope of the case
`
`alleged by Plaintiff in its Complaint against 18 products in six product categories to now
`
`accusing 115 accused products in nine product categories, including media players, smartphones,
`
`smart TVs, smart Blu-ray systems, smart media systems, personal computers, tablets, eReaders,
`
`and game consoles, along with all “reasonably similar products and/or services” for each of
`
`SCEA, SoMC, and SEL. The PICs also accuse 15 separate services that allegedly run on the
`
`accused products, most of which are third-party services and one or more of which are alleged to
`
`be present or used in each accused product.2
`
`Furthermore, motions to transfer venue have been filed in virtually all if not all of the
`
`other cases brought by Plaintiff in this Court based on the same family of patents. Because
`
`
`1 Counsel for the parties agreed pursuant to Fed. R. Civ. P. 29 to extend the original time period
`for serving non-infringement contentions and related document production by 14 days, without
`impacting any deadlines or events affecting the Court. The parties of course recognize that the
`latter cannot be modified under Rule 29 and would require Court order.
`2 The accused services include Android Market, Google Play (including Play Store, Play Music,
`Play Books, Play Magazines, and Play Movies & TV), YouTube, Sony Entertainment Network
`(e.g., Music Unlimited and Video Unlimited), PlayStation Store, Netflix, Hulu Plus, Amazon
`(Prime) Instant Video, Kindle Store, Sony Reader Store, Windows Store, Xbox Video, Xbox
`Music, Xbox Games, and Sony Media Go.
`
`-3-
`
`

`
`Case 2:12-cv-02828-JPM-tmp Document 27-1 Filed 02/07/13 Page 4 of 4 PageID 120
`
`
`similar motions are pending in all such other cases, it seems reasonable that the Court will
`
`consider the question of venue and case-management measures, such as stays, on a consistent,
`
`global basis. Moreover, most of the transfer motions seek venue in the Northern District of
`
`California, whose local patent rules impose different requirements.3 Because the ultimate
`
`determination of venue for this and the other 18 cases will impact an extraordinary amount of
`
`burdensome and costly activity, Sony maintains that venue should be decided first.
`
`For these reasons, Sony respectfully requests that the above captioned cases be stayed
`
`pending a resolution of the motions to transfer filed by the Sony entities.
`
`Respectfully submitted,
`
`/s/ __Glen G. Reid, Jr._________
`Glen G. Reid, Jr. (#8184)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1000
`Facsimile: 901.537.1010
`greid@wyattfirm.com
`
`
`
`/s/ _Mark Vorder-Bruegge, Jr.__________
`Mark Vorder-Bruegge, Jr. (#06389)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1000
`Facsimile: 901.537.1010
`mvorder-bruegge@wyattfirm.com
`
`
`
`
`OF COUNSEL
`
`/s/ John Flock ___ ________
`John Flock (admission pending)
`jflock@kenyon.com
`Michael E. Sander (admission pending)
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`212.425.7200
`
`Attorneys for Defendants Sony Computer
`Entertainment America LLC, Sony Mobile
`Communications (U.S.A.) Inc., and Sony
`Electronics Inc.
`
`
`
`60322585.1
`2/7/2013 3:53 pm
`
`
`3 For example, the Local Rules of the Northern District of California do not require non-
`infringement contentions or responses to invalidity contentions. See
`www.cand.uscourts.gov/localrules/patent.
`
`-4-