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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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` Civil Action No. 2:12-cv-02866 – JPM-tmp
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`MOTOROLA MOBILITY
`HOLDINGS LLC,
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`Defendant.
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`DEFENDANT’S MEMORANDUM IN SUPPORT OF ITS
`MOTION TO STAY PENDING RESOLUTION OF ITS
`MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
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`Case 2:12-cv-02866-JPM-tmp Document 38-1 Filed 02/07/13 Page 2 of 7 PageID 358
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`TABLE OF CONTENTS
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`Page
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`I. 
`II. 
`III. 
`IV. 
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`INTRODUCTION ............................................................................................................. 1 
`PROCEDURAL BACKGROUND.................................................................................... 2 
`ARGUMENT..................................................................................................................... 3 
`CONCLUSION.................................................................................................................. 4 
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`Case 2:12-cv-02866-JPM-tmp Document 38-1 Filed 02/07/13 Page 3 of 7 PageID 359
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`In re All Terrain Vehicles Litig.,
`No. 88-237, 1989 WL 30948, at *2 (E.D. Penn. Feb. 23, 1989) ...............................................4
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`In re FusionIO, Inc.,
`No. 12-139, 2012 WL 6634939, *1 (Fed. Cir. Dec. 21, 2012)..............................................2, 4
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`ii
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`Case 2:12-cv-02866-JPM-tmp Document 38-1 Filed 02/07/13 Page 4 of 7 PageID 360
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`Defendant Motorola Mobility Holdings LLC1 (“Motorola”) is respectfully moving this
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`Court to stay all proceedings in this case, including proceedings called for in the Local Patent
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`Rules, pending resolution of Motorola’s motion to transfer this case to the Northern District of
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`California, pursuant to 28 U.S.C. § 1404(a).
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`I.
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`INTRODUCTION
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`On December 19, 2012, Motorola filed a motion to transfer this case to the Northern
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`District of California. See D.I. 18. Absent a stay, the Court and the parties will likely expend
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`significant resources that they might otherwise not need to expend if Motorola’s motion is
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`granted. For example, by February 21, 20132 Motorola must respond to more than 1000
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`pages of vague infringement contentions and produce related documents pursuant to Local
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`Patent Rules 3.3 and 3.4. Moreover, Motorola’s Invalidity Contentions and accompany
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`documents are due April 4, 2013, and Motorola must identify claim terms for construction no
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`later than April 8, 2013. See Local Patent Rules 3.5, 3.6 and 4.1. On the other hand, Plaintiff
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`B.E. Technology, L.L.C. (“B.E.”) will suffer no prejudice as a result of a brief stay.
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`In addition, motions to transfer venue have been filed so far in nearly all of the other
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`18 other cases brought by B.E. in this Court based on the same family of patents. Because
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`similar motions are pending in almost all the other cases, it seems reasonable that the Court
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`will consider the question of venue and case-management measures, such as stays, on a
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`consistent, global basis. Moreover, most of the transfer motions seek venue in the Northern
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`1 Motorola Mobility Holdings LLC is not the proper entity as it does not use, make, sell, or offer
`to sell the Xyboard and Xoom tablets or the Atrix, Electrify 2, Defy XT, or Photon Q 4G LTE
`smartphones. The proper entity is Motorola Mobility LLC (“Motorola”).
`2 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.
`1
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`District of California, whose local patent rules impose different requirements. 3 Because the
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`ultimate determination of venue for this and the other 18 cases will impact an extraordinary
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`amount of burdensome and costly activity, Motorola maintains that venue should be decided
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`first.
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`Moreover, a stay of proceedings pending a motion to transfer is consistent with the
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`Federal Circuit’s recent decision in In re Fusion-IO, Inc., in which the Court indicated that:
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`(1) a timely-filed motion to transfer under § 1404(a) should be decided before proceeding to
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`the merits of an action; and (2) it is appropriate to stay litigation pending decision of a
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`motion to transfer. See Ex. 1, In re FusionIO, Inc., No. 12-139, 2012 WL 6634939, *1 (Fed.
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`Cir. Dec. 21, 2012) (non-precedential).4 In accordance with Fusion-IO, Motorola respectfully
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`requests the Court to decide its motion to transfer before discovery commences, and in the
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`meantime, temporarily stay all other proceedings (including Local Patent Rule disclosures) in
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`this case.
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`II.
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`PROCEDURAL BACKGROUND
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`On September 21, 2012, B.E. filed this lawsuit against Motorola alleging infringement
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`of one claim of U.S. Patent No. 6,771,290 (“the ‘290 Patent”). See D.I. 4. In its Complaint,
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`B.E identified the following accused products: “Motorola tablets: Xyboard and Xoom tablets;
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`Motorola smartphones: Atrix, Electrify 2, Defy XT, Photon Q 4G LTE.” Id. Motorola timely
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`filed its Answer on December 31, 2012. See D.I. 25.
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`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 Pursuant to Federal Rule of Appellate Procedure 32.1, a court may not prohibit or restrict the
`citation of federal judicial opinions that have been designated as “non-precedential” if they issued
`on or after January 1, 2007.
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`2
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`Case 2:12-cv-02866-JPM-tmp Document 38-1 Filed 02/07/13 Page 6 of 7 PageID 362
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`On December 19, 2012, Motorola moved to transfer this case to the Northern District
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`of California, where the company is headquartered and the vast majority of its likely relevant
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`witnesses and documents are located. See D.I. 18. B.E filed its opposition on January 7, 2013
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`(see D.I. 26) and Motorola filed its reply brief on January 29, 2013 (see D.I. 35). Motorola
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`also requested an expedited hearing on this issue. See D.I. 18. Accordingly, Motorola’s
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`motion to transfer is fully briefed.
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`Substantive discovery will soon commence in this litigation. B.E. served its Initial
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`Infringement Contentions on January 7, 2013. In its contentions, B.E. asserted one
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`additional claim of the ‘290 Patent against over 40 newly identified products and services
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`offered by Motorola and third parties including Google and Netflix. Motorola is required to
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`serve Initial Non-Infringement Contentions on February 21, 2013, and simultaneously
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`produce (or make available for inspection) “[d]ocuments sufficient to describe the structure,
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`composition, and/or operation of the Accused Instrumentality.” Additionally, Motorola must
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`serve Invalidity and Unenforceability Contentions (and accompanying documents) by April
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`4, 2013 and must identify claim terms for construction no later than April 8, 2013.
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`III. ARGUMENT
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`Based on the legal standards and arguments set forth herein and in the motions to stay
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`and accompanying memorandum filed by Samsung Telecommunications America, LLC and
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`Samsung Electronics America, Inc., Civil Action Nos. 12-cv-02824-JPM-cgc and 12-cv-02825-
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`JPM-tmp, as well as those set forth in the motion to stay filed by Facebook, Inc., Civil Action
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`No. 12-cv-02769-JPM-tmp, Motorola respectfully requests that the Court exercise its inherent
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`power to immediately stay all proceedings in this case, including Local Patent Rule disclosures,
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`pending disposition of Motorola’s motion to transfer. Prioritizing the decision of the motion to
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`3
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`Case 2:12-cv-02866-JPM-tmp Document 38-1 Filed 02/07/13 Page 7 of 7 PageID 363
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`transfer and temporarily staying all other proceedings is consistent with the Federal Circuit’s
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`opinion in In re Fusion-IO, as well as precedent from other circuits. See, e.g,, In re All Terrain
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`Vehicles Litig., No. 88-237, 1989 WL 30948, at *2 (E.D. Penn. Feb. 23, 1989) (citing
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`McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 31 (3d Cir. 1970)) (“transfer motion is to be
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`decided before proceeding on the merits.”).
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`IV. CONCLUSION
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`Motorola respectfully requests the Court stay all other proceedings in this litigation
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`including Local Patent Rule disclosures and fact discovery pending resolution of Motorola’s
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`motion to transfer.
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`Of counsel:
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`A. John P. Mancini
`MAYER BROWN LLP
`1675 Broadway
`New York, NY 10019-5820
`(212) 506-2500
`jmancini@mayerbrown.com
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`Brian A. Rosenthal
`Ann Marie Duffy
`MAYER BROWN, LLP
`1999 K Street, NW
`Washington, DC 20006
`(202) 263-3000
`brosenthal@mayerbrown.com
`aduffy@mayerbrown.com
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`Attorneys for Defendant
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`60322283.1
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`Respectfully submitted,
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`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
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`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
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`Attorneys for Defendant