Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 1 of 37
`
`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`
`Matthew D. Vella (Cal. State Bar No.
`314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S. Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: (949) 232-6375
`
`Attorneys for Plaintiff
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`Charles K. Verhoeven (Bar No. 170151)
`charlesverhoeven@quinnemanuel.com
`David Perlson (Bar No. 209502)
`davidperlson@quinnemanuel.com
`Jonathan Tse (Bar. No. 305468)
`jonathantse@quinnemanuel.com
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
`
`Deepa Acharya (Bar No. 267654)
`deepaacharya@quinnemanuel.com
`1300 I Street, NW, Suite 900
`Washington, DC 20005
`Telephone: (202) 538-8000
`Facsimile: (202) 538-8100
`
`Attorneys for Defendant
`
`(ADDITIONAL COUNSEL IN SIGNATURE
`BLOCKS)
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`UNILOC 2017 LLC,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`Case Nos.: 4:20-cv-04355-YGR
`4:20-cv-05330-YGR; 4:20-cv-05333-YGR;
`4:20-cv-05334-YGR; 4:20-cv-05339-YGR;
`4:20-cv-05340-YGR; 4:20-cv-05341-YGR
`4:20-cv-05342-YGR; 4:20-cv-05343-YGR
`4:20-cv-05344-YGR; 4:20-cv-05345-YGR
`4:20-cv-05346-YGR
`
`JOINT CASE MANAGEMENT
`STATEMENT & [PROPOSED] ORDER
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`GOOGLE EXHIBIT 1051
`GOOGLE v. UNILOC
`IPR2020-00755
`
`Page 1 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 2 of 37
`
`
`
`
`
`Uniloc 2017 LLC (“Uniloc”) and Google LLC (“Google”), the parties to the above-
`
`captioned actions, jointly submit this JOINT CASE MANAGEMENT STATEMENT &
`
`PROPOSED ORDER pursuant to the Standing Order for All Judges of the Northern District of
`
`California and Civil Local Rule 16-9.
`
`The above-captioned actions were all originally filed in the Eastern District of Texas in
`
`two waves, the first in November 2018 and the second between late December 2018 and early
`
`January 2019. Claim construction orders issued in the Wave 1 cases and claim construction
`
`briefing completed in the Wave 2 cases. Following the Federal Circuit’s order in In re Google
`
`LLC, Case No. 2019-126, 2020 WL 728165 (Fed. Cir. Feb. 13, 2020), the Eastern District of
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`Texas stayed the Wave 2 cases to allow the parties to further address the question of transferring
`
`11
`
`the cases, but left the Wave 1 cases to continue. In June 2020, the Eastern District of Texas
`
`12
`
`ordered all of the cases transferred to this District.
`
`13
`
`This Court related the above-captioned actions in August 2020 and instructed the parties
`
`14
`
`to submit a comprehensive Case Management Conference Statement for all of the cases.
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`1.
`
`Jurisdiction & Service
`
`The basis for the court’s subject matter jurisdiction over plaintiff’s claims and defendant’s
`counterclaims, whether any issues exist regarding personal jurisdiction or venue, whether any
`parties remain to be served, and, if any parties remain to be served, a proposed deadline for
`service.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331 and 1338(a).
`
`There are no disputes regarding venue, and no parties that remain to be served.
`
`2.
`
`Facts
`
`A brief chronology of the facts and a statement of the principal factual issues in dispute.
`
`A.
`
`Plaintiff’s Statement
`
`As noted above, these twelve cases between Uniloc and Google were all originally filed
`
`in the Eastern District of Texas in two waves, the first in November 2018 and the second
`
`between late December 2018 and early January 2019. As Google acknowledged, “each case []
`
`asserts different patents and generally implicates different accused technologies . . . .” -4355
`
`1
`
`Page 2 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 3 of 37
`
`
`
`Case, Dkt No. 325 (Google’s Motion to Relate) at 2. This bears repeating: Google itself
`
`admitted that the cases are unrelated and have different accused technologies. Indeed, none of
`
`the patents are “related” in the patent sense.
`
`
`Wave N.D. Cal.
`Case No.1
`-4355
`
`E.D. Tex.
`Case No.
`-504
`
`Cases
`U.S. Patent
`No.2
`8,949,954
`
`-5330
`
`-491
`
`6,473,114
`
`-5333
`
`-492
`
`6,952,450
`
`1
`
`-5334
`
`-496
`
`6,349,154
`
`-5339
`
`-499
`
`8,194,632
`
`-5340
`-5341
`
`-5342
`-5343
`-5344
`
`-501
`-502
`
`-548
`-550
`-551
`
`6,452,515
`8,407,609
`
`6,253,201
`6,628,712
`7,012,960
`
`-5345
`
`-552
`
`9,564,952
`
`2
`
`-5346
`
`-553
`
`6,366,908
`
`
`
`Title
`
`Customer notification program alerting
`customer-specified network address of
`unauthorized access attempts to customer
`account
`Method and system for indicating change of
`speaker in a videoconference application
`Unequal error protection of video based on
`motion vector characteristics
`Method and Arrangement for creating a
`high-resolution still picture
`Method for establishing network
`connections between stationary terminals
`and remote devices through mobile devices
`Video encoder and decoder
`System and method for providing and
`tracking the provision of audio and visual
`presentations via computer network
`Scalable solution for image retrieval
`Seamless switching of MPEG video streams
`Method of transcoding and transcoding
`device with embedded filters
`Near field authentication through
`communication of enclosed content sound
`waves
`Keyfact-based text retrieval system,
`keyfact-based text index method, and
`retrieval method
`
`
`1
`For ease of reference, the cases are referred to by their non-placeholder digits, such as
`“the -4355 Case” instead of “Case No. 4:20-cv-04355-YRG.” The -4355 Case had been the
`“-504 Case,” i.e., Case No. 2:18-cv-504-JRG-RSP, in the Eastern District of Texas.
`
`2
`
`For ease of reference, the patents are hereafter referred to by their last three digits.
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Page 3 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 4 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Additional information about each of the cases, patents, accused products and IPRs may be
`
`found in the Table at Appendix 1, and Uniloc’s summary of the individual actions in Appendix
`
`2.
`
`All of the Wave 1 and Wave 2 cases had discovery set to close on March 30, 2020;
`
`opening expert reports were also due on March 30, 2020; and jury selection was set to
`
`commence on August 17, 2020. But, the COVID-19 pandemic and a variety of discovery
`
`disputes forced the parties to pass the March 30, 2020, discovery and expert report deadlines
`
`without actually finishing discovery and serving expert reports in the Wave 1 cases. On March
`
`16, 2020, Uniloc filed in each of the Wave 1 cases an emergency motion to modify the
`
`10
`
`scheduling order as a result of COVID-19. See, e.g., -493 Case, Dkt. No. 205.3,4 On March 19,
`
`11
`
`2020, the Eastern District of Texas held an informal telephone conference with counsel for both
`
`12
`
`sides regarding Uniloc’s emergency motion. See -493 Case, Dkt. No. 209. At the conference,
`
`13
`
`the parties agreed there was outstanding discovery to complete after March 30, 2020. The
`
`14
`
`Eastern District of Texas directed the parties to exchange, by close of business on March 20,
`
`15
`
`2020, a list of all remaining discovery the parties sought. Id. The parties filed a joint notice on
`
`16
`
`March 26, 2020. See -493 Case, Dkt. No. 216. Both parties’ proposals acknowledged the need
`
`17
`
`to conduct depositions, source code review, and expert discovery after March 30, 2010. Id. On
`
`18
`
`March 27, 2020, the Eastern District of Texas entered an order that applied to all Wave 1 cases,
`
`19
`
`directing the parties to file “non-deposition” discovery motions by April 1, 2020 and deposition-
`
`20
`
`related discovery motions by April 15, 2020. -493 Case, Dkt. No. 218. Both parties filed
`
`21
`
`motions to compel written discovery on April 1, 2020. The Eastern District of Texas held
`
`22
`
`hearings and issued rulings on those motions. Uniloc does not know if Google produced all
`
`23
`
`documents it intended to produce, to comply with the Eastern District’s rulings, before transfer.
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`3
`As will be discussed below, the Wave 2 cases were already stayed at this point.
`
`4
`The Eastern District of Texas issued its orders regarding the emergency motion only in
`the -493 Case—a Wave 1 case that was not transferred to this Court—but stated that the orders
`applied to all Wave 1 cases. As such, the filings and orders of the Eastern District of Texas
`related to this motion are attached to this Statement as exhibits.
`
`3
`
`Page 4 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 5 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`During hearings on some of Uniloc’s motions to compel, Google made representations that it
`
`had made a reasonable search for certain documents and produced them. The Eastern District
`
`accepted some of these representations with the caveat that Uniloc could test the veracity of
`
`these representations through depositions.
`
`On April 15, both parties filed motions for protective orders to limit deposition topics and
`
`the number of hours Rule 30(b)(6) witnesses would be deposed. The motions for protective
`
`order were filed by both parties in response to Rule 30(b)(6) deposition notices previously
`
`served. On April 20, 2020, the Eastern District of Texas began holding hearings on the parties’
`
`motions for protective orders relating to the Rule 30(b)(6) notices. See -493 Case, Dkt. Nos.
`
`10
`
`248, 253, 254. During those hearings, the Eastern District of Texas ruled on objections to
`
`11
`
`deposition topics and the number of hours the parties would be allowed to depose certain
`
`12
`
`30(b)(6) witnesses. It also indicated that Uniloc would be allowed to have in-person depositions
`
`13
`
`of Google’s witnesses, either during discovery or as trial-depositions. Prior to transfer, the
`
`14
`
`parties were in the process of scheduling and conducting depositions (consistent with the Eastern
`
`15
`
`District’s rulings on the motions for protective orders) and conducting source code review.
`
`16
`
`While it was understood that a new expert report deadline would be set, the cases were
`
`17
`
`transferred before a new deadline was set.
`
`18
`
`Google (and others) petitioned for inter partes review (“IPR”) of most, but not all, of the
`
`19
`
`patents. Some of these IPRs have been instituted, other petitions are pending and several have
`
`20
`
`been denied. The parties agreed to stay most of the cases in which IPRs were thus far instituted.
`
`21
`
`In addition, in one case the parties stipulated to summary judgment of invalidity based upon the
`
`22
`
`Eastern District of Texas’s claim construction. Specific information about IPRs and the status of
`
`23
`
`each case may be found in the table in Appendix 1, and the summaries of each case in Appendix
`
`24
`
`2.
`
`25
`
`Google now asks the Court to stay all of the cases because some of the cases are subject
`
`26
`
`to pending IPR petitions, a position it eschewed in the Eastern District of Texas. Google’s new
`
`27
`
`tactic is improper for several reasons. First, of course, each patent is its own, separate property
`
`28
`
`right. Second, each case is its own, separate case. Third, as Google admitted, the patents are
`
`4
`
`Page 5 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 6 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`unrelated, and thus nothing that happens in an instituted IPR as to one will have any impact, e.g.,
`
`claim construction, on any of the others. Fourth, there are three cases—the -5333, -5342 and -
`
`5343 Cases—that cannot be subject to IPRs at this point. There are three others—the -5344, -
`
`5345 and -5346 Cases—where IPR petitions have been filed, but not instituted. And, none of the
`
`active cases before this Court are subject to instituted IPRs. Finally, Google’s suggestion that it
`
`would avoid duplicative discovery by avoiding multiple depositions of the same witness ignores
`
`the fact that witnesses in these cases are already subject to multiple depositions. For example,
`
`Mr. Etchegoyen, Uniloc’s CEO and the inventor/co-inventor of two of the patents is already
`
`subject to 27 hours of depositions. Mr. Burdick, the former President of a Uniloc affiliate—
`
`10
`
`which is not a party to this action—is subject to 21 hours of depositions. Mr. Pedersen, Uniloc’s
`
`11
`
`current General Counsel, and Mr. Turner, Uniloc’s former CFO, are both subject to 14 hours of
`
`12
`
`deposition each. -493 Case, Dkt. No. 248. Thus, Uniloc’s and many of Google’s witnesses will
`
`13
`
`already have to sit for depositions for more than one day each. Dividing those days between the
`
`14
`
`active cases and ones that are stayed is no hardship at all.
`
`15
`
`Separately, Google moved to dismiss each of the cases, arguing that Uniloc lacked
`
`16
`
`standing and that the venue was improper. E.g., -4355 Case, Dkt. Nos. 20 (motion to dismiss for
`
`17
`
`lack of standing and improper venue); 64 (order regarding discovery and briefing re standing and
`
`18
`
`venue); 95 (renewed motion to dismiss for lack of standing and improper venue). The Eastern
`
`19
`
`District of Texas denied as moot the first iteration. E.g., -4355 Case, Dkt. No. 100. Briefing was
`
`20
`
`completed as to a second motion to dismiss for lack of standing, e.g., -4355 Case, Dkt. Nos. 99
`
`21
`
`(Google’s motion); 116 (Uniloc’s response); 123 (Google’s reply); 130 (Uniloc’s sur-reply), but,
`
`22
`
`the Eastern District of Texas did not rule upon it. Uniloc asks the Court to hold a hearing and
`
`23
`
`rule upon Google’s motion.
`
`24
`
`Google asks the Court to stay all of the cases pending even further briefing and then
`
`25
`
`resolution of its motion to dismiss; that is unnecessary. Google’s new tactic is improper for
`
`26
`
`several reasons. First, Google has already had two separate rounds of briefing as to its motion to
`
`27
`
`dismiss; enough is enough. Second, while Google grounds its argument for further briefing on
`
`28
`
`demands for additional documents that were provided to Apple—documents that are in the
`
`5
`
`Page 6 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 7 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`process of being produced—Google’s motion to dismiss is dissimilar from Apple’s. Third, there
`
`is no reason this Court cannot allow the cases to proceed in parallel with considering Google’s
`
`arguments, as did the Eastern District of Texas. Fourth, Uniloc’s counsel in the Eastern District
`
`of Texas repeatedly suggested to Google’s counsel that they approach that court to ask that the
`
`Court take up the issue. Google’s counsel repeatedly declined to do so. So, it would be
`
`improper to attempt to delay these cases now, simply because they were transferred.
`
`The Eastern District of Texas entered agreed discovery orders, e.g., -4355 Case, Dkt. No.
`
`42; joint ESI orders, e.g., -4355 Case, Dkt. No. 69; and disputed protective orders, see, e.g.,
`
`-4355 Case, Dkt. No. 51.
`
`10
`
`The parties engaged in a mediation regarding all of the cases before the Honorable David
`
`11
`
`Folsom (ret.) on February 6, 2020 but were unable to resolve their disputes. See, e.g., -4355
`
`12
`
`Case, Dkt. No. 170.
`
`13
`
`The Eastern District of Texas held Markman hearings for the Wave 1 cases and issued
`
`14
`
`claim construction orders. As for the Wave 2 cases, the parties had completed claim
`
`15
`
`construction briefing and were preparing for Markman hearings spread across February 18, 19
`
`16
`
`and 20, 2020 but, on February 14, 2020, the Eastern District of Texas sua sponte stayed the
`
`17
`
`Wave 2 cases pending further consideration of the Federal Circuit’s order in In re Google LLC,
`
`18
`
`No. 2019-126, 2020 WL 728165 (Fed. Cir. Feb. 13, 2020). The stay across the Wave 2 cases
`
`19
`
`was renewed several times until the court transferred all the cases to this District.
`
`20
`
`In sum, five of the twelve cases are either stayed (due to instituted IPRs) or dismissed
`
`21
`
`(due to summary judgment). The parties intend to move to stay another one of the active cases,
`
`22
`
`which is subject to third party IPRs. The remaining six cases are all active. All twelve are
`
`23
`
`discussed in Appendix 2.
`
`B.
`
`Defendant’s Statement
`
`Uniloc 2017 LLC (“Uniloc”) is one of several related Uniloc entities (including Uniloc
`
`USA, Uniloc Luxembourg and Uniloc Licensing USA LLC) that have mounted a coordinated,
`
`multi-year patent assertion campaign against a host of internet, telecommunications and mobile
`
`24
`
`25
`
`26
`
`27
`
`28
`
`6
`
`Page 7 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 8 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`device companies. These entities have filed over 500 litigations across the country. The PTAB
`
`has found at least 41 patents asserted by Uniloc 2017 to be unpatentable and district courts have
`
`found over a dozen patents invalid.
`
`In late 2018, as part of its broader patent aggregation and assertion strategy, Uniloc filed
`
`21 complaints, each asserting a single patent, against Google in the Eastern District of Texas in
`
`two waves, referred to as “Wave 1” and “Wave 2”. Of these 21 filed cases, Uniloc has
`
`voluntarily dismissed three with prejudice in the face of pending summary judgment motions
`
`and adverse claim construction rulings5, voluntarily dismissed another at the very early stages of
`
`the case, and stipulated to dismissal of a fifth due to an adverse indefiniteness finding. Further,
`
`10
`
`Uniloc agreed to stay eight of the cases pending completion of instituted IPRs, agreed to stay
`
`11
`
`another pending appeal of a decision in another matter declaring Uniloc’s patent invalid pursuant
`
`12
`
`to 35 U.S.C. §101, and stayed another pending both an adverse § 101 finding and adverse IPR
`
`13
`
`decisions. Thus, of Uniloc’s 21 originally filed cases, ten cases are stayed and only six cases
`
`14
`
`currently remain active, although IPR institution decisions in three more cases are expected by
`
`15
`
`October 21, 2020.
`
`16
`
`In the remaining six actions, Uniloc asserts U.S. Patent Nos. 6,952,450; 6,253,201;
`
`17
`
`6,628,712; 7,012,960; 9,564,952; and 6,366,908 (“the Asserted Patents”), and Uniloc accuses a
`
`18
`
`number of different Google products, including YouTube, Pixel devices, Google Cloud Media
`
`19
`
`and Entertainment, Chromecast, Google Photos, Google Lens, Google Cloud Vision API and
`
`20
`
`AutoML, Google Reverse Image Search, and Google Search. For the Court’s reference, a table
`
`21
`
`briefly summarizing the cases, including the accused products is attached as Appendix 1.
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`i.
`
`The Cases Involve Numerous Overlapping Issues and Witnesses and
`Will Be Significantly Impacted by Pending IPRs; A Stay Pending
`Completion of the IPRs Is the Most Efficient Course
`
`As evidenced by Uniloc’s statement of facts, these cases present numerous complex legal
`
`and procedural issues. Many of the Asserted Patents are subject to multiple IPRs filed by
`
`
`5 Google’s motions for fees and costs are pending in the Eastern District of Texas in each of these three
`cases.
`
`7
`
`Page 8 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 9 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`multiple parties. Despite Uniloc’s attempt to characterize the cases as independent, there is
`
`significant overlap in the accused products, the accused technologies and functionalities, the
`
`potential witnesses, and the likely discovery issues between the remaining cases, the cases that
`
`are stayed pending IPRs, and the cases in which IPR institution decisions are expected by
`
`October 21, 2020. For example, video encoding of YouTube videos is accused of infringement
`
`in the 5333 and 5341 (IPR instituted) cases; and video encoding in Google Cloud Media and
`
`Entertainment is similarly at issue in the 5343 and 5344 cases, as well as in the stayed Texas
`
`case 18-cv-00500. Google has petitioned for inter partes review of the patent at issue in the 5344
`
`case, and the institution decision is due in late October. The overlapping Texas case is stayed
`
`10
`
`pending appeal of adverse § 101 decisions. All of these cases are likely to involve analysis of
`
`11
`
`similar YouTube and Google Cloud Media and Entertainment technologies, overlapping
`
`12
`
`financial data, and the testimony of multiple common witnesses. As a result, the outcomes of the
`
`13
`
`filed IPRs and the appeal of the adverse § 101 decision likely will have material impacts on any
`
`14
`
`remaining cases involving YouTube and Google Cloud Media and Entertainment. Similarly,
`
`15
`
`both the pending 5342 case and the 5334 case (IPR instituted) relate to image processing
`
`16
`
`technology and implicate a common accused product, which will involve certain overlapping
`
`17
`
`discovery efforts.
`
`18
`
`The substantive and procedural commonality between the suits is augmented by the fact
`
`19
`
`that many of the patents-in-suit originated with Koninklijke Phillips N.V.. Uniloc acquired the
`
`20
`
`patents in a single transaction. This includes the patents asserted in the 5333, 5334, 5342, 5343,
`
`21
`
`5344 cases, as well as the stayed 5330 case, and stayed Texas cases 18-cv-00494, 18-cv-00495,
`
`22
`
`18-cv-00498, and 18-cv-00500. Thus, any discovery relating to Uniloc’s acquisition of these
`
`23
`
`patents and to the origins, prosecution and commercialization of these patents necessarily will
`
`24
`
`involve common witnesses, issues and potential disputes.
`
`25
`
`Uniloc makes much of an alleged admission by Google that the cases are separate, but
`
`26
`
`takes Google’s words out of context. Google stated:
`
`27
`
`28
`
`Although each case in the table above asserts different patents and generally implicates
`different accused technologies, they all involve the same parties, same Uniloc witnesses,
`
`8
`
`Page 9 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 10 of 37
`
`
`
`and, on some issues, common Google witnesses. Recognizing this relationship, the E.D.
`Tex. Court consolidated the Related Cases for pretrial purposes.
`
`(-4355 Case, Dkt. No. 325.) Indeed, discovery has confirmed that much of the evidence overlaps,
`
`making separate discovery periods for the cases inefficient. Google has offered a single witness
`
`to testify concerning the various Google licensing agreements relevant to all of the remaining
`
`matters, and relevant financial data and discovery is likely to overlap in many of the matters.
`
`Uniloc’s witnesses are the same in every case. Thus discovery will proceed much more
`
`efficiently if the cases proceed on a single schedule.6
`
`Uniloc suggests that because the Texas court ordered several witnesses to sit for multiple
`
`days in the Wave 1 cases that it will be simple to divide the depositions between stayed cases
`
`and active cases. This ignores that there are overlapping issues between cases that cannot simply
`
`be divided between stayed and active cases. Nor does Uniloc address how to schedule these on
`
`its proposed staggered schedule. Uniloc’s suggestion that the multiple days be divided also
`
`ignores the hardship to both party and non-party witnesses. As detailed more fully below, given
`
`the substantive and procedural overlap between these cases, it would be most efficient to stay all
`
`cases until all pending IPRs are resolved. Such a stay will avoid potentially conflicting
`
`constructions and applications of relevant claim language, sidestep multiple rounds of
`
`depositions and discovery motions regarding common/overlapping issues, and prevent
`
`potentially needless litigation effort as to patents that may be declared invalid. It will also allow
`
`the Court and parties to determine how best to consolidate these actions to maximize efficiency.
`
`ii.
`
`Uniloc Does Not Have Standing
`
`As detailed in Google’s long-pending motion to dismiss (e.g., Case No. 4:20-cv-05333-
`
`YGR, Dkt. No. 102), the ownership of the Asserted Patents has shifted alongside Uniloc’s
`
`changing corporate and capital structure between the various Uniloc entities and companies that
`
`have financed Uniloc’s litigations, such as Fortress Investment Group (“Fortress”). The various
`
`
`6 Uniloc notes that many witnesses will be deposed across multiple days but does not explain
`how that will yield a more efficient schedule.
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Page 10 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 11 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`transfers of patents and patent rights are documented in a number of agreements and
`
`amendments to those agreements between the Uniloc entities and its financing companies, often
`
`transferring and dividing the rights in ownership amongst a number of entities. Based on certain
`
`automatic transfers that were set forth by the terms of these agreements, Fortress, not Plaintiff
`
`Uniloc 2017, now owns critical patent rights in the Asserted Patents, and Uniloc does not have
`
`standing to maintain these suits. Google’s threshold motion to dismiss for lack of standing thus
`
`affects all of the pending cases and should be decided before any further litigation occurs.
`
`iii.
`
`Response to Uniloc’s Statement of Facts
`
`Uniloc’s statement of facts and Appendix 2 misstate a number of items about the cases.7
`
`In particular, Uniloc suggests that Google’s conduct somehow necessitated the filing of
`
`numerous discovery motions and/or a delay in the schedule in Texas. Google disagrees. The vast
`
`majority of Uniloc’s discovery motions were denied. Further, of Uniloc’s outstanding discovery
`
`motions in Wave 2, several nearly identical motions were denied in Wave 1. In addition, Uniloc
`
`states, without providing details, that Google may not have produced all documents required
`
`under the orders issued by the Eastern District of Texas. In fact, Google is unaware of any
`
`outstanding productions. Of course, Uniloc fails to note its own discovery deficiencies and
`
`delays as well as Google’s discovery motions.
`
`Uniloc also misstates the accused products. For example, in the stayed 5330 case, Uniloc
`
`lists Codename Hub as an accused product even though it was never charted in Uniloc’s
`
`infringement contentions. And in the -5334 case, the Pixel 4, 4XL, and 3A are identified as
`
`accused products, though those devices are not accused in Uniloc’s infringement contentions and
`
`were released after the relevant patent expired.
`
`Uniloc also misstates the asserted claims. Uniloc lists claims 1-6, 8, 10, 12-14 and 16-27
`
`as accused in the -5333 case. However, Uniloc’s infringement contentions do not include claims
`
`25-27.
`
`
`7 Uniloc’s statement of facts above and Appendix 2 contain numerous misstatements. In the
`interest of space, Google will not address each of them here.
`
`10
`
`Page 11 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 12 of 37
`
`
`
`Finally, Uniloc misstates the Eastern District of Texas’s rulings about in-person
`
`depositions. The Eastern District of Texas did not issue an order requiring in-person depositions.
`
`Rather, the parties were in the process of scheduling and taking remote depositions at the time
`
`the transfer order issued.
`
`3.
`
`Legal Issues
`
`A brief statement, without extended legal argument, of the disputed points of law, including
`reference to specific statutes and decisions.
`
`A.
`
`Plaintiff’s Statement
`
`Uniloc asserts that Google infringes a patent in each of the cases. As such, the disputed
`
`legal issues include:
`
`
`
`Whether Google is liable for infringement of the asserted patents pursuant to 35
`
`U.S.C. § 271(a) and (b);
`
`
`
`Whether the asserted claims of the asserted patents are invalid under one or more
`
`of 35 U.S.C. §§ 102, 103, or 112;
`
`
`
`
`
`
`
`Whether Uniloc’s claims are barred or limited based on any affirmative defense;
`
`Whether Uniloc’s damages are limited under 35 U.S.C. § 287; and
`
`The amount of damages and other monetary relief, if any, for which Google is
`
`liable, assuming liability is proven, including costs, reasonable attorneys’ fees, and
`
`interest.
`
`B.
`
`1.
`
`Defendant’s Statement
`
`Whether Uniloc has the necessary rights in the Asserted Patents to have standing
`
`to bring this lawsuit;
`
`Whether Google directly infringed one or more claims of the Asserted Patents;
`
`Whether Google induced infringement of one or more claims of the Asserted
`
`2.
`
`3.
`
`Patents;
`
`4.
`
`Whether Google contributed to infringement of one or more claims of the
`
`Asserted Patents;
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`11
`
`Page 12 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 13 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`5.
`
`Whether the Asserted Patents are valid and/or enforceable under 35 U.S.C. §§
`
`101, 102, 103 and/or 112;
`
`6.
`
`Whether, assuming liability, Uniloc suffered any damages provided for by 35
`
`U.S.C. § 284 and whether any such damages are limited under 35 U.S.C. § 287;
`
`7.
`
`Whether Uniloc’s claims are enforceable under the doctrine of inequitable
`
`conduct;
`
`8.
`
`9.
`
`Whether Uniloc’s claims are barred under any equitable doctrine;
`
`Whether Uniloc’s claims for relief are barred in whole or in part by an express or
`
`implied license, and/or the patent exhaustion doctrine; and
`
`10
`
`10. Whether this is an exceptional case entitling Google to reasonable attorneys’ fees,
`
`11
`
`costs, and disbursements pursuant to 35 U.S.C. § 285, 28 U.S.C. § 1927, or any other applicable
`
`12
`
`authority.
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`4.
`
`Motions
`
`All prior and pending motions, their current status, and any anticipated motions.
`
`A.
`
`Plaintiff’s Statement
`
`Among the six active cases, the following motions remain pending:
`
`Pending Motions
`Motion
`Case Dkt.
`-5333
`232 Google’s motion to compel Uniloc
`to respond to invalidity and
`eligibility interrogatories
`
`
`Uniloc filed a response, -5333 Case,
`Dkt. No. 253, and the Eastern District
`of Texas held a hearing on the motion,
`-5333 Case, Dkt. No. 279, but the case
`was transferred prior to the court’s
`order.
`Uniloc filed a response, -5342 Case,
`Dkt. No. 137, Google filed a reply, -
`5342 Case, Dkt. No. 143, and Uniloc
`filed a sur-reply, -5342 Case, Dkt. No.
`149, but the case was stayed prior to
`the hearing.
`Google filed a response, -5342 Case,
`Dkt. No. 145, but the case was stayed
`prior to the hearing.
`
`
`-5342
`
`132 Google’s motion to submit a rebuttal
`expert declaration on claim
`construction or strike Uniloc’s
`extrinsic definitions
`
`134 Uniloc’s motion to compel
`identification and production of
`financial documents
`
`12
`
`Page 13 of 37
`
`

`

`Case 4:20-cv-05346-YGR Document 200 Filed 09/14/20 Page 14 of 37
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`138 Uniloc’s motion to compel
`communications between Google
`and third-parties re litigation
`
`140 Google’s motion to strike objections
`to interrogatories and compel full
`responses
`142 Uniloc’s motion to strike invalidity
`contentions
`
`5343
`
`120 Uniloc’s motion to compel products
`reasonably similar to charted
`products
`
`134 Uniloc’s motion to compel
`identification and production of
`financial documents
`
`135 Uniloc’s motion to compel
`communications between Google
`and third-parties re litigation
`
`13
`
`This motion is similar to motions
`Uniloc filed in each of the Wave 1
`cases, which motions were granted in
`part, e.g., -4355 Case, Dkt. No. 214
`Google filed a response, -5342 Case,
`Dkt. No. 150, but the case was stayed
`prior to the hearing