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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES,
`INC.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
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`FILED UNDER SEAL
`PURSUANT TO PROTECTIVE
`ORDER
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`DEFENDANT GOOGLE LLC’S REPLY IN SUPPORT OF ITS
`MOTION TO TRANSFER VENUE
`
`
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 2 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`NDCA is clearly more convenient than WDTX for this litigation. It is where the vast majority
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`of the evidence is and where the accused Chromecast products originated and continue to be primarily
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`developed. The relevant witnesses primarily reside in NDCA or where NDCA is no less inconvenient
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`than WDTX. Touchstream (“TS”) relies on alleged “witnesses” in Texas. But, examining the
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`evidence, none of them relate to the disputed issues (the accused Chromecast functionality). And not
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`a single alleged Texas witness resides in Waco. Convenience favors transfer to NDCA. If, however,
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`the Court credits TS’s “witnesses” as relevant, then this case should be transferred to Austin.
`
`I.
`
`THIS CASE SHOULD BE TRANSFERRED TO NDCA.
`
`A.
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`The Balance of the Private Interest Factors Favors Transfer
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`Google Witnesses. Google has identified witnesses likely to testify in this case (Golueke ¶¶
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`7-9): engineers, engineering managers, product marketing managers, and finance managers, all with
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`information relevant to the accused functionality. They, and their reports, are mostly in California
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`and none are in Texas. Golueke ¶¶ 7-9. TS claims that the witnesses are not relevant without support.
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`Instead, TS identifies alleged witnesses, but many do not work on Chromecast, and TS does
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`not link them to the accused functionality. Actually looking at the facts, it is clear that none of the
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`employees identified by TS are relevant. For example, TS claims that anyone who works on YouTube
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`is relevant. YouTube is a large organization with many irrelevant aspects. Google has identified the
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`relevant witnesses, while TS merely lists YouTube personnel in Texas without linking them to the
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`accused functionality or prior art. See, e.g., Resp. App. 1. As another example,
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`e.g., Golueke ¶ 7. Instead, TS offers a list of names with no relevance. For example,
`
`
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`.1 See,
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`
`
`
`
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`1 TS claims that Google’s deponent was not prepared to discuss the several individuals that TS first
`raised only roughly 36 hours before the deposition. None of those individuals were raised during Mr.
`Golueke’s rigorous investigation, and Google does not intend to call them as witnesses.
`
`NAI-1522366864v5
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`
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 3 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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` (Resp. Ex. C at 9). Second,
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`(id. at 11-12). Finally, based on TS’s evidence,
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`
`
`
`
`
`
` (Resp. Ex. U).
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`TS Witnesses. TS identified no party witnesses in WDTX (Ex. Z, 98:12-99:9). TS employees
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`or leadership are in NDCA (Ex. Z, 45:13-48:21), Pennsylvania, or New York (Op. at 2; Resp. at 11).
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`Third Parties. TS speculates that former Google employees, who allegedly worked on aspects
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`of Chromecast (or other unrelated products) are relevant. Resp. at 6. However, while such witnesses’
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`roles may relate to the accused products, they are not relevant to the accused functionality. These witnesses,
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`for example,
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`C at 11);
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`issue in this case (Resp. Ex. C at 12); and there is no evidence
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` (see id.). As another example:
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`
`
`
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`(Resp. Ex.
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` is not relevant to any
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`
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` is relevant to the accused functionality (Resp. Ex. T).
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`Second, TS identifies two former TS employees who are supposedly in Texas, but neither
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`justifies denying transfer.
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`
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`after the filing of the Complaint, making him irrelevant for this analysis. See Supp. McLean Decl. ¶ 9;
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`In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013) (“Motions to transfer venue are to be decided
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`based on ‘the situation which existed when suit was instituted.’”). And
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`
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`subject to NDCA subpoena power. See Ex. Z, 23:8-24:17; Exs. C, T. TS also
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`downplays that
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`
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` reside in California. See Ex. Z, 35:3-48:21. These individuals may have highly
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`relevant information as to why TS was unable to make additional sales. See id.
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`
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`2
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`
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 4 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Third, TS overstates the relevance of third-party companies in Texas, claiming that “Texas
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`was an important battleground between [TS] and Google” (Resp. at 8). TS’s only evidence for this is
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`that TS attempted to develop an enterprise-level product with
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`See Ex. Z, 42:18-43:5, 78:11-
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`79:5. There is no evidence that
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`
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`Despite TS’s misguided
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`claims (Resp. at 8), Google’s distributors, suppliers, and purported app partners are not relevant to
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`any infringement, invalidity, or damages issues, are unlikely to testify at trial,
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`
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`2 TS also ignores that, of the “witnesses with knowledge of [TS]’s
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`business and licensing deals” (Resp. 8),
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`
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` also have relevant witnesses in California. Ex. Z, 35:3-40:12, 70:13-72:11.3
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`Finally, Google has identified seven third party witnesses (inventors of prior art systems or
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`products) within the subpoena power of NDCA but not this District. Op. 4, 8. TS asks the Court to
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`ignore these witnesses because “prior art witnesses are very unlikely to testify.” Resp. at 9.4 But
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`Google routinely calls prior artists as witnesses at trial, such as in Profectus Tech. LLC v. Google, No. 20-
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`cv-101 (WDTX) where a prior-art witness testified and the jury invalidated an asserted patent. See also
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`In re Hulu, 2021 WL 3278194, at *4 (prior art witnesses relevant to compulsory process factor).
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`Access to Evidence.
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`Resp. at 4-5. Google’s declarant, however, testified that
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`(Ex. X, 184:1-8)
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`
`
`
`
`
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`(Golueke ¶ 10). See In re Apple Inc., No. 2022-128, 2022
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`2
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`
`
`
` TS also fails to connect suppliers to the software-based claim elements here.
`3 TS also makes much of attendance at SXSW. This example occurred over 8 years ago, after the
`accused Google product was released, and bears no relevance to the patent case here.
`4
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`3
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 5 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`WL 1196768, at *4 (Fed. Cir. Apr. 22, 2022) (favoring transfer where records were maintained in
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`NDCA and were not easier to access in WDTX).5
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` that
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`is neither in WDTX nor NDCA, and is irrelevant because “evidence [] stored in places other than
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`either the transferor or the transferee forum does not weigh against transfer.” In re Juniper, 14 F.4th
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`at 1321. Likewise, TS’s northeastern-located documents (see Resp. at 5) do not weigh against transfer.
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`Other Practical Issues. TS denies the relevance of the
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`at 12. But it is relevant
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` Resp.
`
` Op. at
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`4. Also, Google timely filed this motion pursuant to the operative Standing Order, and Google was
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`not required to file the motion any earlier. Moreover, trial was over a year away at the motion’s filing.
`
`B.
`
`The Balance of the Public Interest Factors Weigh in Favor of Transfer
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`TS’s claims that Texas was “the site of numerous [TS] deals and product launches” defies
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`reality. Resp. at 13. TS only identifies 3 companies:
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`and none are in WDTX. In contrast,
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`
`
`
`
`
`
` See Ex. Z, 86:17-87:9, 90:10-91:17. In addition, TS identifies third parties with
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`alleged dealings with Google, but they are irrelevant because, while TS alleges those third parties’
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`connections are in Texas, they are outside of WDTX. Moreover, suppliers, distributors, and app
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`developers also have offices in NDCA, so WDTX has “no more or less of a meaningful connection .
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`. . than any other venue.” In re TS Tech, 551 F.3d at 1321.7 TS also suggests that Google’s presence
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`in Austin weighs against transfer (Resp. 14). But this factor is not about the parties’ “connections to
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`each forum writ large,” but rather to “the events that gave rise to a suit.” In re Apple, 979 F.3d at 1345.
`
`
`5 See also In re Google (Jenam Tech.), 2021 WL 4592280, at *7 (sources of proof not “difficult to access
`electronically” from WDTX “does not support weighing this factor against transfer”).
`6 As TS acknowledges, it did not successfully do any business with
`
`
`
` See Ex. Y, 16:21-17:25.
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`
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`4
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 6 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Finally, court congestion is the least important factor. Genentech, 566 F.3d at 1347. It “concerns
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`whether there is an appreciable difference in docket congestion,” and “[n]othing about the court’s
`
`general ability to set a schedule directly speaks to that issue.” In re Adobe, 823 F. App’x at 932.
`
`II.
`
`ALTERNATIVELY, THE CASE SHOULD BE TRANSFERRED TO AUSTIN
`
`Although this case belongs in NDCA, TS relies on irrelevant “witnesses” based in Austin,
`
`where Google maintains a campus. TS’s evidence and arguments, see Resp. at 10-11, if credited,
`
`demonstrate that intra-district transfer to Austin is at least appropriate, if not compelled. The factors
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`for intra-district transfer are the same as already addressed,8 and applying them, Austin is clearly more
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`convenient than Waco. Austin is the location of TS’s alleged witnesses and evidence and the only
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`place with local interest (no party, no evidence, no witness is in Waco). Other factors are neutral.9
`
`Factor
`Relative ease of access to
`sources of proof
`
`Compulsory process
`Cost of attendance for
`willing witnesses
`
`If the Court credits TS’s arguments
`Favors Austin because TS alleges there are witnesses in Austin who
`would create and maintain documents. No documents or any
`sources of proof are alleged to be created or maintained in Waco.
`Neutral
`Favors Austin because Google has an office there and TS alleges
`there are witnesses in Austin, who would find it more convenient to
`testify at home instead of more than 100 miles away. No witnesses
`are alleged to be in Waco.
`Neutral
`Neutral
`Favors Austin because Google has an office there and TS alleges
`there are witnesses in Austin. Waco has neither.
`Neutral
`Familiarity with law
`Neutral
`Conflict of laws
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`Fighting to keep this case in Texas, TS has proven that if the case belongs in Texas, Austin is the place.10
`
`Other practical problems
`Court congestion
`Local interest
`
`
`8 In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013) (applying the § 1404(a) factors).
`9 See, e.g., Sonrai Memory Ltd v. Oracle Corp., 6:21-cv-116, Dkt. 48 (W.D. Tex. Feb. 2, 2022); Identity Security
`LLC v. Apple, Inc., 1:22-cv-58, Dkt. 59 (W.D. Tex. Jan. 25, 2022); Neo Wireless LLC v. Dell Techs. Inc. et
`al., 6:21-cv-00024, Dkt. 60 (W.D. Tex. Jan. 20, 2022); Hammond Dev. Int’l, Inc. v. Google LLC, 1:20-cv-
`342, Dkt. 89 (W.D. Tex. June 24, 2020).
`10 To the extent TS deems it necessary to respond to this alternative relief of transferring this case to
`Austin, Google would not oppose TS’s request to file a sur-reply. Alternatively, Google could file a
`motion for intra-district transfer, should the Court prefer.
`
`
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`5
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`
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 7 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`By: /s/ Tharan Gregory Lanier, with permission by
`Michael E. Jones
`
`
`Tharan Gregory Lanier
`
`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
`Palo Alto, CA 94303
`Telephone:
`(650) 739-3939
`Facsimile:
`(650) 739-3900
`
`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
`Shaun W. Hassett
`TX State Bar No. 24074372
`E-mail: shaunhassett@potterminton.com
`110 N. College Ave., Suite 500
`Tyler, TX 75702
`Telephone:
` (903) 597-8311
`Facsimile:
` (903) 593-0846
`
`Attorneys for Defendant
`GOOGLE LLC
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`Dated: April 28, 2022
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`6
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`Case 6:21-cv-00569-ADA Document 55 Filed 05/05/22 Page 8 of 8
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`CERTIFICATE OF SERVICE
`I hereby certify that all counsel of record who have consented to electronic service are
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`being served with a copy of this document via electronic mail on April 28, 2022.
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`I also hereby certify that all counsel of record who have consented to electronic service
`are being served with a notice of filing of this document, under seal, pursuant to L.R. CV-5(a)(7)
`on April 28, 2022.
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`/s/ Michael E. Jones
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`I certify that the foregoing document is authorized to be filed under seal pursuant to the
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`Protective Order in this case and Judge Albright’s Standing Order Regarding Filing Documents
`Under Seal in patent Cases and Redacted Pleadings.
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`/s/ Michael E. Jones
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`7
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