Case 6:21-cv-00569-ADA Document 31 Filed 01/21/22 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`GOOGLE LLC,
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`Plaintiff,
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`v.
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`Defendant.
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`PARTIES’ JOINT STATUS REPORT REGARDING
`DEFENDANT GOOGLE LLC’S MOTION TO TRANSFER VENUE TO NORTHERN
`DISTRICT OF CALIFORNIA UNDER 28 U.S.C. § 1404(a)
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`TO THE HONORABLE COURT:
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`Google’s Statement: Pursuant to the Court’s own Second Amended Standing Order
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`Regarding Motions for Inter-District Transfer (Aug. 18, 2021), the Court should postpone the
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`Markman hearing in this case until it has resolved Defendant Google LLC’s (“Google”) motion to
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`transfer. Google timely filed its transfer motion on December 23, 2021. (Dkts. 26, 27, and 28).
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`Touchstream served venue discovery requests. Neither transfer discovery nor briefing will be
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`complete before February 18, 2022, the date currently set for the Markman hearing in this case. See
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`Dkt. 21. Therefore, the Markman hearing should be delayed until the Court has had the opportunity
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`to resolve the pending transfer motion.
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`This Court’s Standing Order allows a defendant to move for inter-district transfer without
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`restriction at least eight weeks before the Markman hearing. Google complied with this deadline.
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`Google informed Touchstream that it intended to seek transfer early as a courtesy. Google continued
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`to investigate the relevant facts in light of recent Federal Circuit and W.D. Tex. case law to ensure
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`Case 6:21-cv-00569-ADA Document 31 Filed 01/21/22 Page 2 of 6
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`the accuracy of its motion in view of Touchstream’s infringement contentions, which were served
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`and supplemented in August and November 2021, respectively, and Google’s invalidity contentions,
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`which were served in October 2021. Google then filed its motion in December 2021. Touchstream
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`chose to serve extensive venue discovery, which extends venue discovery until March 23, 2022, and
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`briefing until April 20, 2022, both after the scheduled February Markman hearing. The Court should
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`not divert from its August 18, 2021 Standing Order, under which Markman hearings are postponed
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`until after the Court has had the opportunity to resolve a pending transfer motion, consistent with
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`Federal Circuit guidance. In re Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir. 2013) (“a trial court
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`must first address whether it is a proper and convenient venue before addressing any substantive
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`portion of the case”); In re Apple Inc., 979 F.3d 1332, 1337 (Fed. Cir. 2020) (“[O]nce a party files a
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`transfer motion, disposing of that motion should unquestionably take top priority.”).
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`Touchstream’s Statement: Plaintiff Touchstream Technologies, Inc. (“Touchstream”)
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`respectfully requests that the Court decline to delay the Markman hearing in this case, in light of the
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`following factual circumstances. Touchstream filed its Complaint on June 4, 2021. After being
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`granted a 45-day extension of time, Google filed a Motion to Dismiss Touchstream’s Willful
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`Infringement Claims (Dkt. No. 14), on August 13, 2021. Google declined to move to transfer at that
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`time.
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`Six days later, on August 19, 2021, Google informed Touchstream that it intended to file the
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`pending Motion to Transfer. But Google did not file this Motion in August. Instead, it delayed for
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`four more months, before reaching out (again) on December, 16, 2021, to inform Touchstream
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`(again) that it intended to file the pending Motion. Google then waited until after close of business
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`the night before Christmas Eve to actually file its Motion to Transfer. This was mere days before
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`the deadline set forth in the Court’s Order Regarding Motions for Inter-District Transfer (i.e., eight
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`Case 6:21-cv-00569-ADA Document 31 Filed 01/21/22 Page 3 of 6
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`weeks prior to the scheduled Markman hearing), after which “a showing of good cause for any delay
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`and leave of court” would be required.
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`There has been no change in the underlying factual circumstances of this case since August
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`and thus no meritorious basis for Google’s delay. Touchstream believes that Google delayed the
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`filing of its Motion to Transfer to postpone the date of the Markman hearing and delay this case.
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`The Markman hearing is currently set for February 18, 2022 (Dkt. No. 21). However, due to
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`Google’s unnecessarily delayed filing of its Motion to Transfer, venue discovery will not conclude
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`until March 23, 2022, and briefing will not conclude until April 20, 2022 (see June 8, 2021 Standing
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`Order Regarding Venue Discovery). If the Court delays the Markman hearing until after it has ruled
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`on this Motion, Google—by tactically delaying its filing—will have succeeded in pushing back the
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`Markman hearing date, and thus the beginning of fact discovery, by at least two months, and possibly
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`much longer.
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`Touchstream respectfully requests that the Court decline to reward such gamesmanship, and
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`urges the Court not to postpone the Markman hearing, or at least not without a showing from Google
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`that its delay was for good cause, and not merely for the purposes of delaying the case.
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`Case 6:21-cv-00569-ADA Document 31 Filed 01/21/22 Page 4 of 6
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`Dated: January 21, 2021
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`By: /s/ Fiona A. Bell with permission,
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`by Michael E Jones
` Fiona A. Bell
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`SHOOK, HARDY & BACON L.L.P.
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`Samuel J. LaRoque, pro hac vice
`Email: slaroque@shb.com
`B. Trent Webb, pro hac vice
`Email: bwebb@shb.com
`Ryan D. Dykal, pro hac vice
`Email: rdykal@shb.com
`Jordan T. Bergsten, pro hac vice
`Email: jbergsten@shb.com
`2555 Grand Boulevard
`Kansas City, MO 64108
`(816) 474-6550
`Fax: (816) 421-5547
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`Fiona A. Bell (TX Bar No. 24052288)
`Email: fbell@shb.com
`600 Travis Street, Suite 3400
`Houston, TX 77002
`(713) 227-2008
`Fax: 713-227-9508
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`Attorneys for Plaintiff
`Touchstream Technologies, Inc.
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`By: /s/ Michael C. Hendershot with permission,
`by Michael E. Jones
` Michael C. Hendershot
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`JONES DAY
`Tharan Gregory Lanier (Admitted pro hac vice)
`CA State Bar No. 138784
`E-mail: tglanier@jonesday.com
`Michael C. Hendershot (Admitted pro hac vice)
`CA State Bar No. 211830
`E-mail: mhendershot@jonesday.com
`Evan M. McLean (Admitted pro hac vice)
`CA State Bar No. 280660
`E-mail: emclean@jonesday.com
`1755 Embarcadero Road
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`Case 6:21-cv-00569-ADA Document 31 Filed 01/21/22 Page 5 of 6
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`Palo Alto, CA 94303
`Telephone: (650) 739-3939
`Facsimile:
`(650) 739-3900
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`POTTER MINTON PC
`Michael E. Jones
`TX State Bar No. 10929400
`E-mail: mikejones@potterminton.com
`Patrick C. Clutter
`TX State Bar No. 24036374
`E-mail: patrickclutter@potterminton.com
`110 N. College Ave., Suite 500
`Tyler, TX 75702
`Telephone:
` (903) 597-8311
`Facsimile:
` (903) 593-0846
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`Attorneys for Defendant
`GOOGLE LLC
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`Case 6:21-cv-00569-ADA Document 31 Filed 01/21/22 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing was electronically filed with the Clerk
`of Court using the CM/ECF system, which will send a notification of such filing (“NEF”) to all
`counsel of record who have appeared in this case per Local Rule CV-5(b) on January 21, 2021.
`/s/ Michael E. Jones
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`Michael E. Jones
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