Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
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`CIVIL ACTION NO. 1:22-CV-22706-RNS
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`BELL NORTHERN RESEARCH, LLC,
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`Plaintiff
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`v.
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`HMD AMERICA, INC.; HMD GLOBAL OY;
`SHENZHEN CHINO-E COMMUNICATION
`CO., LTD.; HON HAI PRECISION
`INDUSTRY CO., LTD; TINNO MOBILE
`TECHNOLOGY CORP.; SHENZHEN TINNO
`MOBILE CO., LTD.; TINNO USA, INC.;
`UNISOC TECHNOLOGIES CO., LTD.;
`SPREADTRUM COMMUNICATIONS USA,
`INC.; WINGTECH TECHNOLOGY CO.;
`LTD.; WINGTECH INTERNATIONAL, INC.;
`BEST BUY CO., INC.; BEST BUY STORES
`L.P.; TARGET CORP.; WALMART INC.,
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`Defendants.
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`/
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`REPLY IN SUPPORT OF DEFENDANTS’ MOTION TO SEVER AND STAY
`THE CLAIMS AGAINST THE RETAIL DEFENDANTS
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`Defendants HMD America, Inc., HMD Global Oy (collectively, “HMD”) and Best Buy
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`Co., Inc., Best Buy Stores L.P., Target Corp., and Walmart Inc. (collectively, the “Retail
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`Defendants”), by and through their undersigned counsel hereby file this Reply in support of their
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`Motion to sever and stay the claims against the Retail Defendants until the claims against HMD in
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`this case are resolved (“Motion”). Dkt. 232. Plaintiff Bell Northern filed its Opposition on
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`November 2, 2023. Dkt. 237. Bell Northern has failed to present any legitimate reasons why the
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`claims against the Retail Defendants should not be stayed. Accordingly, Defendants respectfully
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`request that the Court grant their Motion.
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 2 of 8
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`I.
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`Additional Factual Background
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`Defendants filed the present Motion on October 19, 2023. Dkt. 232.
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`On October 24 and 25, 2023—days after Defendants filed their Motion, less than six weeks
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`before the close of fact discovery, and more than six months after receiving the Retail Defendants’
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`discovery responses—Bell Northern for the first time demanded supplementation of written
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`discovery responses by the Retail Defendants based on a slew of asserted discovery deficiencies,
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`including that several Accused Products were missing from the Retail Defendants’ past discovery
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`responses. Bell Northern also sought to meet-and-confer regarding more than a dozen interrogatory
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`responses and over 70 requests for production across the Retail Defendants. See Declaration of
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`Matthew J. Moffa in Support of Reply at Exhibits (“Exs.”) A, B, C.
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`On October 26, 2023, Bell Northern served Rule 30(b)(6) deposition notices on each of the
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`Retail Defendants with less than 14 days’ notice, bringing its total number of noticed depositions
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`to fifteen—without seeking leave of court to take more than ten depositions. Ex. D. Bell Northern
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`seeks to depose each Retail Defendant separately on over 40 topics, and during the Retail
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`Defendants’ busiest time of year—i.e., the holiday season.
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`On October 31, 2023, Bell Northern served Requests for Admissions on each of the Retail
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`Defendants. Ex. E.
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`On November 2, 2023, Bell Northern filed its Opposition to the present Motion. Dkt. 237.
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`On November 3, 2023, Defendants filed a notice of discovery hearing to request an
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`expedited protective order for a temporary stay of their discovery obligations until after the Court
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`rules on Defendants’ present Motion. Dkt. 238.
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 3 of 8
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`II.
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`A Stay Of The Claims Against The Retail Defendants Is Appropriate Under The
`Customer Suit Exception
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`The “‘customer-suit’ exception … exists to avoid, if possible, imposing the burdens of trial
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`on the customer, for it is the manufacturer who is generally the ‘true defendant’ in the dispute.” In
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`re Nintendo of Am., Inc., 756 F.3d 1363, 1365 (Fed. Cir. 2014); see also Katz v. Lear Siegler, Inc.,
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`909 F.2d 1459, 1464 (Fed. Cir. 1990). The critical question in deciding whether to apply the
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`doctrine “is whether the issues and parties are such that the disposition of one case would be
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`dispositive of the other.” Katz, 909 F.2d at 1463.
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`In the present case, Bell Northern admits that its infringement claims against the Retail
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`Defendants derive entirely from its infringement claims against HMD—that is, the infringement
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`claims against the Retail Defendants are based entirely on their selling and/or offering to sell the
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`finished HMD products that are accused of infringement. Bell Northern (BNR) states, “BNR also
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`agrees that the Retail Defendants are accused of infringing the asserted patents by ‘sell[ing] or
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`offer[ing] to sell’ these accused products.” Opposition at 1. Bell Northern does not otherwise allege
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`that the Retail Defendants do anything to the HMD products to make them infringe, or to make
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`them infringe in some different manner. Therefore, Bell Northern does not dispute that disposition
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`of its infringement claim against HMD would be dispositive of its infringement claims against the
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`Retail Defendants.
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`Furthermore, Bell Northern does not dispute and cannot legitimately deny that a stay would
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`potentially avoid substantial litigation burdens on the Retail Defendants. To the contrary, Bell
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`Northern is currently pressing the Retail Defendants to provide extensive fact discovery in a
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`belated and improper manner. Those efforts include recently (1) demanding extensive
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`supplementation of the Retail Defendants’ responses to Bell Northern’s initial written discovery
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`requests more than six months after the Retail Defendants served responses, (2) serving for the
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 4 of 8
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`first time deposition notices on the Retail Defendants with less than 14 days’ notice and far
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`exceeding the permissible total number of depositions without leave of court, and (3) serving for
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`the first time requests for admission. If the Court were to stay Bell Northern’s infringement claims
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`against the Retail Defendants, the extensive fact discovery that Bell Northern now seeks from the
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`Retail Defendants would be avoided. (Meanwhile, and to allow time for the Court to issue a report
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`and recommendation on the instant motion and for the parties to brief any oppositions thereto,
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`Defendants are separately seeking an expedited protective order from Bell Northern’s belated and
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`improper fact discovery efforts, for which a hearing before Magistrate Judge Goodman has been
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`set for next week on November 15.)
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`Importantly, under 35 U.S.C. § 299(a), each Retail Defendant has a right to its own trial
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`separate from the other Retail Defendants and HMD. Section 299 “is more stringent than Rule 20,
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`and adds a requirement that the transaction or occurrence must relate to making, using, or selling
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`of the same accused product or process.” In re Nintendo Co., Ltd., 544 F. App’x 934, 939 (Fed.
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`Cir. 2013). Bell Northern does not and cannot allege pursuant to Section 299 (1) that the various
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`Defendants are jointly and severally liable, or (2) that, in the alternative, Bell Northern’s asserted
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`right to relief involves the same transactions or occurrences relating to allegedly infringing acts.
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`To the contrary, Bell Northern admits that its infringement claims against the Retail Defendants
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`are based on each Retail Defendant’s independent selling or offering to sell distinct HMD phones.
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`The relevant transactions and occurrences relating to each Retail Defendant’s accused sales and
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`offers to sell are unique to each Retail Defendant and are not the same acts alleged with respect to
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`the other Retail Defendants or HMD.
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`The Retail Defendants have not waived their right to have separate trials. Accordingly, a
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`stay of the claims against the Retail Defendants would have the benefit of potentially avoiding
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 5 of 8
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`imposing the burdens of trials on multiple customers. In re Nintendo of Am., Inc., 756 F.3d at 1365;
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`see also Katz, 909 F.2d at 1463.
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`Bell Northern’s Opposition is founded on the assertion that Defendants’ Motion is an
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`“eleventh hour motion” filed at a “late stage of the case.” Opposition at 1. Not so. In this regard,
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`Bell Northern attempts to distinguish the cases cited by Defendants as involving early motions to
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`stay, and further cites Vehicle IP, LLC v. AT&T Mobility LLC, 227 F. Supp. 3d. 319, 332 (D. Del.
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`2016). Opposition at 3-4. Vehicle IP is distinguishable for at least two major reasons: First, in
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`Vehicle IP, the manufacturer and customer defendant were heading to a consolidated trial.
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`Vehicle IP, 227 F. Supp. 3d. at 332. In contrast, as explained above, the Retail Defendants in the
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`present action are entitled to separate trials and have not waived their right to separate trials.
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`Second, in Vehicle IP, discovery was complete. Id. In the present action, however, discovery is not
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`complete and significant discovery burdens remain ahead. While the Retail Defendants contend
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`that Bell Northern’s belated fact discovery demands are defective and legally inoperative under
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`Local Rules 26.1(g)(2) and (h), the fact remains that a substantial amount of fact discovery is still
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`being sought by Bell Northern from the Retail Defendants, and expert discovery has not yet even
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`begun. Bell Northern cannot deny that a stay at this time would potentially avoid the extensive fact
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`discovery that Bell Northern now seeks from the Retail Defendants, and would obviate any need
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`to them to participate in expert discovery entirely.
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`III. A Stay Of The Claims Against The Retail Defendants Is Appropriate Under
`Traditional Stay Factors
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`A stay of Bell Northern’s claims against the Retail Defendants also would be appropriate
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`under traditional stay factors. Defendants’ Motion does not address the likelihood of ultimately
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`prevailing on the merits, but the other factors weigh heavily in favor of a stay.
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 6 of 8
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`For the reasons explained above, not staying the case would irreparably harm the Retail
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`Defendants because they would be subject to the extensive discovery that the present Motion seeks
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`to avoid. There would be no harm to Bell Northern because, as a non-practicing entity, it will be
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`adequately compensated by any damages it recovers from HMD, and the claims of infringement
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`and invalidity for the Retail Defendants will rise or fall with the disposition of those claims for
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`HMD. Finally, a stay would be in the public interest because proceeding against HMD as the “true
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`defendant” would avoid unnecessary litigation burden for the Retail Defendants.
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`IV. CONCLUSION
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`For the reasons set forth above, the Court should apply the customer-suit doctrine or
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`traditional stay factors and stay Plaintiff’s claims against the Retail Defendants.
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 7 of 8
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`Dated: November 9, 2023
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`Respectfully submitted,
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`/s/Joseph W. Bain
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`JOSEPH W. BAIN, Esq.
`Florida Bar No. 860360
`Email: jbain@shutts.com
`SHUTTS & BOWEN LLP
`1100 City Place Tower
`525 Okeechobee Boulevard
`West Palm Beach, Florida 33401
`Telephone: (561) 835-8500
`Facsimile: (561) 650-8530
`
`JODI-ANN TILLMAN, ESQ.
`Florida Bar No. 1022214
`Email: jtillman@shutts.com
`SHUTTS & BOWEN LLP
`200 East Broward Blvd.
`Suite 2100
`Fort Lauderdale, Florida 33301
`Telephone: (561) 671-5822
`Facsimile: (561) 650-8530
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`ATTORNEYS FOR
`DEFENDANTS HMD AMERICA,
`INC., HMD GLOBAL OY, BEST
`BUY CO., INC., BEST BUY STORES, L.P.,
`TARGET CORP. and WALMART INC.
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`/s/ Matthew J. Moffa
`WILLIAM J. MCCABE, ESQ. (pro hac vice)
`MATTHEW J. MOFFA, ESQ. (pro hac vice)
`MATTHEW A. LEMBO, ESQ. (pro hac vice)
`Email: WMcCabe@perkinscoie.com
`Email: MMoffa@perkinscoie.com
`Email: MLembo@perkinscoie.com
`PERKINS COIE LLP
`1155 Avenue of the Americas, 22nd floor
`New York, NY 10036
`Telephone: (212) 262-6900
`
`KEVIN PATARIU, ESQ. (pro hac vice)
`Email: kpatariu@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real
`Suite 300
`San Diego, CA 92013
`Telephone: (858) 720-5700
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`ATTORNEYS FOR DEFENDANTS
`HMD AMERICA, INC., HMD GLOBAL
`OY, BEST BUY CO., INC., BEST BUY
`STORES, L.P., and TARGET CORP.
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`Case 1:22-cv-22706-RNS Document 248 Entered on FLSD Docket 11/09/2023 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on this 9th day of November 2023, I electronically filed the
`foregoing with the Clerk of Court using the CM/ECF system which will send notice of electronic
`filing to all counsel of record.
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`WPBDOCS 20771183 1
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`/s/ Joseph W. Bain
`Joseph W. Bain
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