Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 1 of 8
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`RFCYBER CORP.,
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`Plaintiff,
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`v.
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`VISA U.S.A. INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`§
`Case No. 6:22-cv-00697-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF RFCYBER CORP.’S OPPOSITION TO
`DEFENDANT VISA U.S.A. INC.’S
`MOTION TO DISMISS RFCYBER CORP.’S
`COMPLAINT FOR PATENT INFRINGEMENT (DKT. 7)
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`Defendant.
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 2 of 8
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`TABLE OF CONTENTS
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`Page(s)
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`BACKGROUND ................................................................................................................ 1
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`LEGAL STANDARD ......................................................................................................... 1
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`THE COURT SHOULD GRANT A DISCRETIONARY EXTENSION OF
`TIME FOR SERVICE ........................................................................................................ 2
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`I.
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`II.
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`III.
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`IV.
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`CONCLUSION ................................................................................................................... 4
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`i
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 3 of 8
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`DatRec, LLC v. AllegianceMD Software, Inc.,
`No. 21-CV-543-TCK-JFJ, 2022 WL 2758527 (N.D. Okla. July 14, 2022) ..............................3
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`Henderson v. United States,
`517 U.S. 654 (1996) ...................................................................................................................1
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`John W. Stone Oil Distrib., LLC v. PBI Bank, Inc.,
`No. 3:09-CV-862-H, 2010 WL 3221800 (W.D. Ky. 2010) .......................................................3
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`Millan v. USAA GIC,
`546 F.3d 321 (5th Cir. 2008) .....................................................................................................2
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`Statutes
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`35 U.S.C. § 286 ................................................................................................................................2
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`Other Authorities
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`Fed. R. Civ. P. 4(m) .................................................................................................................1, 2, 3
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`Fed. R. Civ. P. 12(b)(5)....................................................................................................................2
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`ii
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 4 of 8
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`Visa U.S.A. Inc. (“Visa” or “Defendant”) was served with the Complaint on October 27,
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`2022. Defendant waited three weeks after service, until November 17, 2022, to file the instant
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`motion requesting dismissal of the case due to a mere 31-day delay in service, which Visa does
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`not even allege was prejudicial. Dismissing the case without prejudice now, months after service
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`has been effectuated, would merely delay proceedings, unnecessarily increase work, time, and
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`expenses for the Court and Parties by having to redo service and filings under a new caption, and
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`would go against the intention of Federal Rule of Civil Procedure 4(m) of promoting efficient
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`litigation.
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`I.
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`BACKGROUND
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`RFCyber Corp. (“RFCyber” or “Plaintiff”) filed its Complaint against Visa on June 28,
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`2022. Dkt. 1. On October 27, 2022, Visa was served via its registered agent. Dkt. 6. The short
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`delay in service was not intentional, but due to a miscommunication by Plaintiff’s counsel. On
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`November 17, 2022, Visa filed the instant motion to dismiss.
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`II.
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`LEGAL STANDARD
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`Fed. R. Civ. P. 4(m) states that “[i]f a defendant is not served within 90 days after the
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`complaint is filed, the court—on motion or on its own after notice to the plaintiff—must dismiss
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`the action without prejudice against that defendant or order that service be made within a specified
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`time.” Fed. R. Civ. P. 4(m). Courts are not required to dismiss a case merely because service was
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`outside of the 90-day window. Henderson v. United States, 517 U.S. 654, 661 (1996) (noting that,
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`under earlier version of Rule 4(m), “the 120–day provision operates not as an outer limit subject
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`to reduction, but as an irreducible allowance”).
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 5 of 8
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`III. THE COURT SHOULD GRANT A DISCRETIONARY EXTENSION OF
`TIME FOR SERVICE
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`Visa moved to dismiss this case under Fed. R. Civ. P. 12(b)(5) for failure to comply with
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`Fed. R. Civ. P. 4(m), which requires service of the complaint within 90 days of filing. Here, Visa
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`was served with the Complaint 31 days after the 90-day deadline imposed by Rule 4(m). The
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`Court should grant a discretionary 31-day extension of time for service for two reasons.
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`First, if this action is dismissed without prejudice and later refiled, Plaintiff will be
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`statutorily barred from seeking damages for the period dating back to June 28, 2016, i.e., 6 years
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`prior to the filing of the Complaint in this case. 35 U.S.C. § 286. The Complaint in this case does
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`not limit the damages period, and RFCyber seeks to recover for Visa’s infringement up to the 6-
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`year statutory maximum. The Complaint states that RFCyber “has the right to recover all damages
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`for past, present, and future infringement of the Patents-in-Suit,” and accuses Visa products which
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`were launched in 2013 and 2014, such as Visa Token Service and Visa Ready. Dkt. 1, ¶¶ 10, 12;
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`Exs. 1, 2. A discretionary extension may be warranted “if the applicable statute of limitations
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`would bar the refiled action.” Millan v. USAA GIC, 546 F.3d 321, 325 (5th Cir. 2008) (quoting
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`Fed. R. Civ. P. 4(m) advisory committee’s note (1993)). Here, 35 U.S.C. § 286 would bar RFCyber
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`from seeking damages back to June 28, 2016 in the refiled action. As such, a discretionary
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`extension is warranted.
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`Second, Visa has been properly served for some time and was not prejudiced in any way
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`by the short delay in service. RFCyber’s delay was not intentional, as it was due to a
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`miscommunication. Immediately upon recognizing the issue, RFCyber properly served Visa. The
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`31-day delay was not inordinate, and Visa has now been properly served for seven weeks. It would
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`be markedly inefficient to dismiss this case now, as RFCyber would simply need to immediately
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`refile the case and serve the complaint again.
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`2
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 6 of 8
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`Accordingly, under similar facts, Courts have used their discretion to grant a permissive
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`extension of time for service and denied motions to dismiss. For example, the court in DatRec,
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`LLC v. AllegianceMD Software, Inc., No. 21-CV-543-TCK-JFJ, 2022 WL 2758527 (N.D. Okla.
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`July 14, 2022) addressed a motion to dismiss with nearly identical facts to those here. There, the
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`defendant was properly served 137 days after filing, and the Court found that there was no good
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`cause for the delay. Id. at *2. However, like the situation here, the “delay in effecting service was
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`not inordinate, prejudicial, or intentional.” Id. Under these circumstances, the court granted a
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`permissive extension of time and denied the motion to dismiss, stating:
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`Dismissing this case now that Defendant is served and presumably ready to address
`the merits would do nothing to advance the efficient litigation of cases that Rule
`4(m) is intended to promote—to the contrary, it would be inefficiency of the highest
`magnitude to dismiss the case and require the parties and Court administrative staff
`start anew on under a different caption. Id.
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`The Court should reach the same decision here. Granting Visa’s motion to dismiss now
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`that it has been properly served for nearly two months would be highly inefficient, contrary to the
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`intent of Rule 4(m), and it would unnecessarily impose additional work, time, and costs on the
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`Court administrative staff and the parties. John W. Stone Oil Distrib., LLC v. PBI Bank, Inc., No.
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`3:09-CV-862-H, 2010 WL 3221800, at *2 (W.D. Ky. 2010) (“All parties agree that Defendant has
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`now received service of process on both the original complaint and the amended complaint. If the
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`Court dismisses the claim without prejudice, Plaintiff will be free to re-file tomorrow and will
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`simply re-effect service of process. . . . In the absence of prejudice to Defendant, the Court will
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`extend the time limitation for effecting service of process through the time of actual service, which
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`was effectuated on June 2, 2010.”).
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`3
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 7 of 8
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`IV. CONCLUSION
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`Based on the above, RFCyber respectfully requests that the Court grant a discretionary
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`extension of time for service and deny Defendant’s motion to dismiss.
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`Dated: December 15, 2022
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`Respectfully submitted,
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`/s/ Richard M. Cowell
`Raymond W. Mort, III
`State Bar No. 00791308
`Email: raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
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`OF COUNSEL:
`Alfred R. Fabricant (pro hac vice to be filed)
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice to be filed)
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice to be filed)
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`Richard M. Cowell (admitted pro hac vice)
`NY Bar No. 4617759
`Email: rcowell@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`ATTORNEYS FOR PLAINTIFF
`RFCYBER CORP.
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`Case 6:22-cv-00697-ADA Document 12 Filed 12/15/22 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on December 15, 2022, a true and correct copy of
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`the above and foregoing document has been served on counsel of record via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3).
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`/s/ Richard M. Cowell
` Richard M. Cowell
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