Case 6:21-cv-00916-ADA Document 109-1 Filed 11/16/22 Page 1 of 4
`Case 6:21-cv-00916-ADA Document 109-1 Filed 11/16/22 Page 1 of 4
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`EXHIBIT 1
`EXHIBIT 1
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`Case 6:21-cv-00916-ADA Document 109-1 Filed 11/16/22 Page 2 of 4
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`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Ray Mort <raymort@austinlaw.com>
`Friday, September 2, 2022 10:54 AM
`Guaragna, John; Mark Scott; Rebecca Jahnke
`Jawbone; DLA RFCyber-Apple; 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
`
` EXTERNAL MESSAGE
`
`All,
`
`Respectfully, the Second Amended Standing Order only applies to Inter-District Transfer motions – not Intra-District
`Transfer Motions. The language regarding not holding a Markman hearing pertains to only motions to transfer based on
`Inter-District Transfer motions. Because Apple has withdrawn its Inter-District Transfer motion, the Markman hearing is
`properly set, albeit 4 months after it should have been held.
`
`The Court should hold the Markman hearing as presently set and deny Apple’s request to further delay this case.
`
`- Ray
`
`RAYMOND W. MORT, III
`
`501 CONGRESS AVE · SUITE 150
`AUSTIN · TEXAS · 78701
`
`THE MORT LAW FIRM, PLLC
`
`AustinLaw.com · (512)-677-6825 · RayMort@AustinLaw.com
`
`The statements contained herein are not intended to and do not constitute an opinion as to any tax or other matter. They are not intended or written to be used,
`and may not be relied upon, by you or any other person for the purpose of avoiding penalties that may be imposed under any Federal tax law or otherwise.
`
`CONFIDENTIALITY NOTE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above.
`This message may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the
`intended recipient or an agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that
`any review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us
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`
`From: Guaragna, John <John.Guaragna@us.dlapiper.com>
`Sent: Friday, September 2, 2022 11:51 AM
`To: Mark Scott <Mark_Scott@txwd.uscourts.gov>; Rebecca Jahnke <Rebecca_Jahnke@txwd.uscourts.gov>
`Cc: Jawbone <jawbone@fabricantllp.com>; DLA RFCyber-Apple <dlarfcyber-apple@dlapiper.com>; Ray Mort
`<raymort@austinlaw.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>; Richard Cowell
`<rcowell@fabricantllp.com>
`Subject: RE: RFCyber Corp. v. Apple, Inc., 6:21-cv-00916-ADA-DTG - Markman Hearing
`
`Mark and Becca: Thank you for this update and, Becca, welcome to the Court.
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`Case 6:21-cv-00916-ADA Document 109-1 Filed 11/16/22 Page 3 of 4
`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.”).
`
`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).
`
`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.
`
`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 the Court wishes, Apple will
`file a formal motion to stay the Markman hearing, which can be briefed on an expedited
`basis.
`
`We appreciate the Court’s consideration of this request.
`
`Sincerely,
`-john
`
`John M. Guaragna
`Partner
`
`T +1 512 457 7125
`
`john.guaragna@us.dlapiper.com
`
`DLA Piper LLP (US)
`303 Colorado Street
`Suite 3000
`Austin, TX 78701
`
`dlapiper.com
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`Case 6:21-cv-00916-ADA Document 109-1 Filed 11/16/22 Page 4 of 4
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`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
`
` EXTERNAL MESSAGE
`
`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.
`
`Thanks,
`Mark
`
`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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