Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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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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`Defendant.
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`CASE NO.: 6:22-cv-00697
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`JURY TRIAL DEMANDED
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`DEFENDANT’S REPLY IN SUPPORT OF ITS MOTION TO DISMISS FOR
`INSUFFICIENT SERVICE OF PROCESS
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`Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 2 of 7
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`TABLE OF CONTENTS
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`Page(s)
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`I. INTRODUCTION ............................................................................................................1
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`II. PLAINTIFF FAILS TO SHOW “GOOD CAUSE” FOR ITS DELAY .........................1
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`III. THE COURT SHOULD NOT GRANT A DISCRETIONARY EXTRENSION OF
`TIME FOR SERVICE BECAUSE NONE OF THE COMMON GROUNDS FOR
`EXTENSION EXISTS .................................................................................................2
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`IV. CONCLUSION .............................................................................................................3
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`i
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`Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 3 of 7
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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) ..............................1
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`Gartin v. Par Pharm. Cos.,
`Inc., 289 F. App’x 688 (5th Cir. 2008) ......................................................................................1
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`Kaden v. Chamisa Arts, Inc.,
`No. EP-15-CV-146-DB, 2016 WL 7616692 (W.D. Tex. July 15, 2016) ..................................2
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`Lambert v. United States,
`44 F.3d 296 (5th Cir. 1995) .......................................................................................................1
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`Millan v. USAA GIC,
`546 F.3d 321 (5th Cir. 2008) .....................................................................................................3
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`Studiengesellschaft Kohle mbH v. Eastman Kodak Co.,
`616 F.2d 1315 (5th Cir. 1980) ...................................................................................................2
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`Statutes
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`35 U.S.C. §286 .............................................................................................................................2, 3
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`Other Authorities
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`Federal Rules of Civil Procedure 4(m) ........................................................................................1, 3
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`Federal Rules of Civil Procedure 12(a)(1)(A)(i) .............................................................................2
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`Federal Rules of Civil Procedure 12(b)(5).......................................................................................1
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`ii
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`Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 4 of 7
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`I.
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`INTRODUCTION
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`Plaintiff RFCyber Corp. (“Plaintiff”) concedes that it failed to serve Visa within 90 days
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`of the filing of its Complaint or to seek an enlargement of time to serve prior to Visa’s motion.
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`Because Plaintiff has failed to show “good cause” for its delay and because none of the customary
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`grounds for granting a discretionary extension of time for service exists, Visa respectfully requests
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`that the Court grant the motion to dismiss under Federal Rules of Civil Procedure 12(b)(5) and
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`4(m) and deny Plaintiff’s belated request for extension of time for service.
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`II.
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`PLAINTIFF FAILS TO SHOW “GOOD CAUSE” FOR ITS DELAY
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`The only excuse Plaintiff offers for its failure to comply with the requirements of Rule
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`4(m) is a “miscommunication by Plaintiff’s counsel.” Opp. at 4. But as to Visa, there was no
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`miscommunication about the failure to serve; there was no communication at all. This Court’s
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`precedents are clear: “simple inadvertence or mistake of counsel or ignorance of the rules usually
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`does not suffice.” Gartin v. Par Pharm. Cos., Inc., 289 F. App’x 688, 692 (5th Cir. 2008) (quoting
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`Lambert v. United States, 44 F.3d 296, 299 (5th Cir. 1995)).
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`Even the non-controlling opinion, DatRec, LLC v. AllegianceMD Software, Inc., No. 21-
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`CV-543-TCK-JFJ, 2022 WL 2758527 (N.D. Okla. July 14, 2022), relied upon by Plaintiff
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`determined that delay caused by miscommunication did not rise to the level of “good cause” under
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`Rule 4(m). Id. at *2. Although the Oklahoma court in AllegianceMD did ultimately grant a
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`discretionary extension, it did so after finding the defendant to be “at least partly responsible for
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`the delay in service, given that it failed to maintain a current address for its registered agent with
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`the Oklahoma Secretary of State.” AllegianceMD, at *2. This is not the case here. Visa was not
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`responsible in any way for Plaintiff’s careless delay of service.
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`Accordingly, there is no good cause for Plaintiff’s failure, and the Court should grant
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`Visa’s motion.
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`1
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`Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 5 of 7
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`III. THE COURT SHOULD NOT GRANT A DISCRETIONARY EXTRENSION OF
`TIME FOR SERVICE BECAUSE NONE OF THE COMMON GROUNDS FOR
`EXTENSION EXISTS
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`Plaintiff requests that the Court grant a discretionary extension of time for service for two
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`reasons: (1) refiling the complaint would shorten the damages period for its claims; and (2) Visa
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`“waited three weeks after service” to file the instant motion and is not prejudiced by the delay.
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`Neither argument has any merit.
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`First, the court should not grant Plaintiff’s discretionary extension of service based on
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`Plaintiff’s damages concern. Here, there are no statute of limitations issues, nothing barring
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`Plaintiff from re-filing its complaint for patent infringement, and nothing barring future litigation
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`of Plaintiff’s patent infringement claims.
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`Plaintiff conflates the concept of being barred from future litigation with that of a limitation
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`on damages. 35 U.S.C. §286 limits the damages period to six years prior to the filing of the
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`complaint, but it does not bar the filing of the complaint itself. This court has previously made
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`this distinction clear—“the only statute of limitations involving patent infringement suits merely
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`limits the period of recovery of damages to six years. It does not expressly limit the patentee’s
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`right to maintain an action.” Kaden v. Chamisa Arts, Inc., No. EP-15-CV-146-DB, 2016 WL
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`7616692, at *6 (W.D. Tex. July 15, 2016) (quoting Studiengesellschaft Kohle mbH v. Eastman
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`Kodak Co., 616 F.2d 1315, 1325 (5th Cir. 1980) (citing 35 U.S.C. § 286)). Plaintiff fails to support
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`its request that the court should grant a discretionary extension of service (absent good cause),
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`merely because damages may be limited in some way by Plaintiff’s own delay.
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`Second, Plaintiff argues that it should be granted a discretionary extension of service
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`because Visa complied with the rules by responding to the complaint within the 21-day period
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`permitted under Rule 12(a)(1)(A)(i) and allegedly has not been prejudiced. Plaintiff’s argument
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`is meritless both factually and legally. Visa has clearly been prejudiced by having to expend
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`2
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`Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 6 of 7
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`company resources to address the filing of what it believes to be a baseless complaint. An
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`extension would prejudice Visa further by allowing Plaintiff to seek greater damages under 35
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`U.S.C. §286 than it could if the Court were to require full compliance with Rule 4(m).
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`Even if Visa would not be prejudiced (and it certainly has been and would be), Plaintiff
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`cites no law where lack of prejudice to the defendant is sufficient to cure Plaintiff’s violation of
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`Rule 4(m) and support a discretionary extension. Instead, as explained in Visa’s opening brief,
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`discretionary extensions are granted for reasons such as a defendant evading service or concealing
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`a defect in attempted service. Mot. at 3 (citing Millan, 546 F.3d at 325).
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`Because none of these common grounds for granting a discretionary extension of time for
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`service applies, the Court should grant Visa’s motion and dismiss the Complaint.
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`IV. CONCLUSION
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`Based on the above, Visa respectfully requests that the Court dismiss the Complaint and
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`deny Plaintiff’s belated request for extension of time for service.
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`Dated: December 22, 2022
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`/s/ James C. Yoon
`James C. Yoon (CA State Bar No. 177155)
`jyoon@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Fax: (650) 493-6811
`Attorneys for Defendant VISA U.S.A. Inc.
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`3
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`Case 6:22-cv-00697-ADA Document 13 Filed 12/22/22 Page 7 of 7
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`CERTIFICATE OF SERVICE
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`The undersigned, an attorney, hereby certifies that a true and correct copy of the foregoing
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`document has been served on all counsel of record via electronic mail on December 22, 2022.
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`By: /s/ James C. Yoon
`James C. Yoon
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