Case 2:14-cv-00061-JRG-RSP Document 14 Filed 02/19/14 Page 1 of 6 PageID #: 411
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:14-cv-0061-JRG-RSP
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`JURY TRIAL DEMANDED
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`ContentGuard Holdings, Inc.,
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`Plaintiff,
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`-against-
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`Google Inc.
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`Defendant.
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`PLAINTIFF CONTENTGUARD’S MOTION FOR CONSOLIDATION
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`Pursuant to Rule 42 of the Federal Rules of Civil Procedure, Plaintiff ContentGuard
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`Holdings, Inc. (“ContentGuard”) respectfully moves to consolidate this action with a co-pending
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`patent infringement action that involves (1) the same nine U.S. patents at issue in this case; (2)
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`allegations of infringement that substantially overlap with those at issue in this case; and (3) a
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`wholly-owned subsidiary of defendant Google Inc. (“Google”).
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`I.
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`RELEVANT BACKGROUND
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`Based in Plano, Texas, ContentGuard is a leading innovator, developer, and licensor of
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`digital-rights management and related digital content distribution products and technologies. On
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`December 18, 2013, ContentGuard filed a complaint in this Court, alleging that Amazon.com,
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`Inc.; Apple Inc.; BlackBerry Corporation; Huawei Device USA, Inc.; and Motorola Mobility
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`LLC (“Motorola”) infringe nine U.S. patents owned by ContentGuard. Dkt. 1, Civ. Action No.
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`2:13-cv-1112-JRG (hereinafter the “Amazon Action”). One of the five defendants in the
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`Case 2:14-cv-00061-JRG-RSP Document 14 Filed 02/19/14 Page 2 of 6 PageID #: 412
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`Amazon Action—Motorola—is a wholly-owned subsidiary of Google.1 The Amazon Action is
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`assigned to the Honorable Rodney Gilstrap.
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`On January 17, 2014, ContentGuard amended its complaint, adding three additional U.S.
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`defendants and their respective foreign parents, as well as foreign parents for certain of the
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`original defendants. The Amazon Action now includes twelve defendants—Amazon.com, Inc.;
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`Apple Inc.; BlackBerry Limited and BlackBerry Corporation; HTC Corporation and HTC
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`America, Inc.; Huawei Technologies Co., Ltd. and Huawei Deice USA, Inc.; Motorola; and
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`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
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`Telecommunications America, LLC.
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`In the Amended Complaint, ContentGuard explained that infringement was based in part
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`on the interaction between mobile devices made by defendants and Google Play, a Google-
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`owned and -operated digital platform for the distribution of movies, videos, music, books,
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`“apps,” and other digital content. In particular, the Amended Complaint alleged that:
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`[E]ach of the Defendants have accused products and methods that use one or
`more of the Google Play “apps” (Google Play Books, Google Play Movies, and
`Google Play Music) to practice the claimed inventions. For example, Google
`Play Books and Google Play Music are available and have been used in accused
`devices made by each of the Defendants, including, merely by way of example,
`the Apple iPad, the Amazon Kindle Fire, the BlackBerry Z10, the HTC One Max,
`the Huawei Ascend, the Motorola Moto X, and the Samsung Galaxy S4. In each
`of these devices and many other devices supplied by Defendants, Google Play
`Books and Google Play Music are and have been used to practice ContentGuard’s
`DRM patents. In addition, Google Play Movies is and has been used to practice
`ContentGuard’s DRM patents on accused devices.
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`[In addition,] there is a logical relationship and many actual links between the
`infringement claims against the Defendants arising out of their common use of the
`Google Play “apps”. Google supplies the Google Play “apps” that are used by all
`Defendants to practice the claimed inventions, and the Google Play “apps”
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`1 On January 29, 2014, Google announced its intention to sell Motorola to a third party. See
`http://investor.google.com/releases/2014/0129.html. This corporate transaction is yet to be
`completed. Id.
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`Case 2:14-cv-00061-JRG-RSP Document 14 Filed 02/19/14 Page 3 of 6 PageID #: 413
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`operate the same way relative to the patents in providing the claimed DRM
`functionality on Defendants’ products.
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`Id. ¶¶ 52-53.
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`On January 31, 2014, instead of seeking to intervene in the Amazon Action, which, as
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`noted, includes one of its wholly-owned subsidiaries and many of its customers, Google
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`commenced a brand new action in the Northern District of California (the “N.D. Cal.
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`Litigation”). In the N.D. Cal. Litigation, Google seeks a declaration that “[n]o version of Google
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`Play Books, Google Play Music, and/or Google Play Movies provided by Google directly or
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`indirectly infringes the [nine patents that are at issue in the Amazon Action].” Compl., Google
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`Inc. v. ContentGuard Holdings, Inc., Civ. Act. No. 3:14-cv-00498-WHA, ¶ 22. In its Complaint,
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`Google freely admits that the impetus for the N.D. Cal. Litigation was the filing of the Amazon
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`Action. Id. ¶ 1.
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`On February 5, 2014, ContentGuard filed this case,2 in which it asserts the same nine
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`U.S. patents that are at issue in the Amazon Action. ContentGuard’s claims against Google are
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`based upon the exact same type of activities (including but not limited to activities that concern
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`Google Play) at issue in the Amazon Action. Pursuant to Judge Gilstrap’s Standing Order for
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`Civil Actions, this action was assigned to this Court.
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`On February 6, 2014, ContentGuard sought Google’s consent to a motion consolidating
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`this case and the Amazon Action for purposes of discovery and case-management, without
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`prejudice to Google’s right to file pleadings-related motions and with both parties reserving their
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`rights to make trial-management proposals at the appropriate time. During subsequent meet-and-
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`confer sessions, counsel for Google acknowledged that, although Google intends to seek to
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`2 ContentGuard would have preferred to add Google to the Amazon Action; however, because
`ContentGuard had already amended its complaint a few days prior, it could not make another
`amendment without consent from the Amazon Action defendants (some of which were yet to
`retain outside counsel) or leave of Court.
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`Case 2:14-cv-00061-JRG-RSP Document 14 Filed 02/19/14 Page 4 of 6 PageID #: 414
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`transfer this action to the Northern District of California, consolidation for purposes of discovery
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`and case management would be appropriate if this action were to go forward in this Court.
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`Nonetheless, counsel for Google declined to consent to the motion for consolidation for fear that
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`such consent would be deemed a waiver of Google’s and Motorola’s rights to make venue and
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`pleadings-related motions.
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`II.
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`ARGUMENT
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`Under Rule 42(a), “[i]f actions before the court involve a common question of law or
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`fact, the court may . . . consolidate the actions.” Particularly in complex patent cases, it is a
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`“waste[]” of judicial resources to “require[e] common issues to be addressed individually for
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`each case.” Norman IP Holdings, LLC v. Lexmark Int’l, Inc., 2012 U.S. Dist. LEXIS 112757, at
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`*16 (E.D. Tex. Aug. 10, 2012).
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`On the record here, consolidation is entirely appropriate, and Google cannot seriously
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`contend otherwise. Both actions involve allegations of patent infringement concerning the same
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`nine U.S. patents, and ContentGuard’s claims against Google are based upon the exact same type
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`of activities (including activities that concern Google Play) at issue in the Amazon Action.
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`Indeed, all of the factors courts traditionally consider when faced with motions under Rule 42(a)
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`support the relief requested herein,3 and asking two very busy courts to separately manage two
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`overlapping patent infringement cases is enormously wasteful.
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`Google’s objection to consolidation is without merit, because post-consolidation both
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`Google and Motorola may file any motion they wish to make. Nor will Google suffer any
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`3 Courts consider the following factors: “(1) whether the actions are pending before the same
`court, (2) whether common parties are involved in the cases, (3) whether there are common
`questions of law or fact, (4) whether there is risk of prejudice or confusion if the cases are
`consolidated, and if so, whether the risk is outweighed by the risk of inconsistent adjudications
`of factual and legal issues if the cases are tried separately, and (5) whether consolidation will
`conserve judicial resources and reduce the time and cost of trying the cases separately.” Clark v.
`PNC Bank, N.A., 2013 U.S. Dist. LEXIS 176508, at *3-4 (W.D. Tex. Dec. 17, 2013).
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`Case 2:14-cv-00061-JRG-RSP Document 14 Filed 02/19/14 Page 5 of 6 PageID #: 415
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`prejudice from consolidation, particularly since, through its subsidiary Motorola, it is already an
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`active participant in the Amazon Action.
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`III. CONCLUSION
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`For the foregoing reasons, ContentGuard respectfully requests an order consolidating this
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`case with the Amazon Action for discovery and case management purposes.
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`Respectfully submitted,
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`/s/ Sam Baxter
`Samuel F. Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`MCKOOL SMITH P.C.
`104 East Houston, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`Holly E. Engelmann
`hengelmann@mckoolsmith.com
`Seth R. Hasenour
`shasenour@mckoolsmith.com
`MCKOOL SMITH P.C.
`300 Crescent Court, Suite 1500
`Dallas, Texas 75201
`Telephone: (214) 978-4000
`Facsimile: (214) 978-4004
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`ATTORNEYS FOR CONTENTGUARD
`HOLDINGS, INC.
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`Dated: February 19, 2014
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`Robert A. Cote
`rcote@mckoolsmith.com
`Radu A. Lelutiu
`rlelutiu@mckoolsmith.com
`Shahar Harel
`sharel@mckoolsmith.com
`David R. Dehoney
`ddehoney@mckoolsmith.com
`Angela M. Vorpahl
`avorpahl@mckoolsmith.com
`MCKOOL SMITH P.C.
`One Bryant Park, 47th Floor
`New York, New York 10036
`Telephone: (212) 402-9400
`Facsimile: (212) 402-9444
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`Case 2:14-cv-00061-JRG-RSP Document 14 Filed 02/19/14 Page 6 of 6 PageID #: 416
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in compliance
`with Local Rule CV-5(a). As such, this document was served on all counsel who have consented
`to electronic services on this the 19th Day of February 2014. Local Rule CV-5(a)(3)(A).
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`/s/ Radu A. Lelutiu
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`CERTIFICATE OF CONFERENCE
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`On February 10 and February 12, 2014, counsel for ContentGuard and counsel for Google
`met and conferred in good faith in an attempt to resolve the issues herein. The meet-and-confer
`sessions ended in an impasse.
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`/s/ Radu A. Lelutiu
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