Case 6:21-cv-00916-ADA-DTG Document 103-4 Filed 09/23/22 Page 1 of 4
`Case 6:21-cv-00916-ADA-DTG Document 103-4 Filed 09/23/22 Page 1of4
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`EXHIBIT 5
`EXHIBIT 5
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`Case 6:21-cv-00916-ADA-DTG Document 103-4 Filed 09/23/22 Page 2 of 4
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`From:
`To:
`Cc:
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`Subject:
`Date:
`Attachments:
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`Guaragna, John
`Mark Scott; Rebecca Jahnke
`Jawbone; DLA RFCyber-Apple; raymort@austinlaw.com; Maggiore, Peter; Loney, Zachary; Cunningham, Sean;
`Gibson, Erin; Lim, Stephanie; Richard Cowell
`RE: RFCyber Corp. v. Apple, Inc., 6:21-cv-00916-ADA-DTG - Markman Hearing
`Friday, September 2, 2022 12:51:27 PM
`image001.png
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`Mark and Becca: Thank you for this update and, Becca, welcome to the Court.
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`In light of Apple’s pending Motion for Intra-District Transfer (ECF No. 93) and
`pursuant to Section VI of the Apr. 14, 2022 OGP and the Court’s Second
`Amended Standing Order Regarding Motions for Inter-District Transfer, Apple
`respectfully requests that the Markman hearing be stayed until Apple’s transfer
`motion is resolved. See Second Amended Standing Order at 1 (“The Court will
`not conduct a Markman hearing until it has resolved the pending motion to
`transfer.”).
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`Apple timely filed its original motion to transfer to the Northern District of
`California (ECF No. 41), followed by extensive venue discovery of Apple. During
`venue discovery, RFCyber took the position that its infringement theories are
`much broader than what is apparent from its infringement contentions. The
`new and broader scope of RFCyber’s infringement theories implicated Apple
`employees in Austin, prompting Apple’s offer to stipulate to transfer the case
`to the Austin Division. RFCyber refused that stipulation, so Apple withdrew its
`motion to transfer to NDCA and filed a motion for intra-district transfer to the
`Austin Division (ECF No. 93).
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`Apple’s motion for intra-district transfer is neither untimely nor prejudicial to
`RFCyber. The parties are engaged in fact discovery, which will continue while
`the Court considers the transfer motion. Furthermore, Apple contends that
`further venue discovery is unnecessary in light of the extensive venue discovery
`RFCyber has already conducted, and RFCyber has yet to serve any further
`venue discovery requests on Apple.
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`In light of the pending motion to transfer, Apple respectfully requests that the
`Court stay the Markman Hearing until Apple’s transfer motion is resolved. If
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`Case 6:21-cv-00916-ADA-DTG Document 103-4 Filed 09/23/22 Page 3 of 4
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`the Court wishes, Apple will file a formal motion to stay the Markman hearing,
`which can be briefed on an expedited basis.
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`We appreciate the Court’s consideration of this request.
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`Sincerely,
`-john
`
`John M. Guaragna
`Partner
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`T +1 512 457 7125
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`john.guaragna@us.dlapiper.com
`
`DLA Piper LLP (US)
`303 Colorado Street
`Suite 3000
`Austin, TX 78701
`
`dlapiper.com
`
`From: Mark Scott <Mark_Scott@txwd.uscourts.gov>
`Sent: Monday, August 29, 2022 9:45 AM
`To: Richard Cowell <rcowell@fabricantllp.com>; William Melsheimer
`<William_Melsheimer@txwd.uscourts.gov>; Rebecca Jahnke <Rebecca_Jahnke@txwd.uscourts.gov>
`Cc: Jawbone <jawbone@fabricantllp.com>; DLA RFCyber-Apple <dlarfcyber-apple@dlapiper.com>;
`raymort@austinlaw.com; Guaragna, John <John.Guaragna@us.dlapiper.com>; Maggiore, Peter
`<peter.maggiore@us.dlapiper.com>; Loney, Zachary <Zachary.Loney@us.dlapiper.com>;
`Cunningham, Sean <Sean.Cunningham@us.dlapiper.com>; Gibson, Erin
`<Erin.Gibson@us.dlapiper.com>; Lim, Stephanie <stephanie.lim@us.dlapiper.com>
`Subject: RE: RFCyber Corp. v. Apple, Inc., 6:21-cv-00916-ADA-DTG - Copy of Joint Claim Construction
`Statement
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`(cid:10073)EXTERNAL MESSAGE
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`Good morning,
`
`The Markman will be on September 20 at 10:00AM before Judge Alan Albright. Becca
`Jahnke (cc’d) will be the new clerk assigned to this matter, so please be in touch with her if
`any issues arise.
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`Thanks,
`Mark
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`Case 6:21-cv-00916-ADA-DTG Document 103-4 Filed 09/23/22 Page 4 of 4
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`Mark J. Scott
`Law Clerk to the Honorable Derek T. Gilliland
`U.S. District Court, Western District of Texas
`Office: 254-340-6151
`
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