Case 6:21-cv-00984-ADA Document 95 Filed 09/20/22 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JAWBONE INNOVATIONS, LLC,
`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`Civil No. 6:21-CV-00984-ADA
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`ORDER GRANTING MOTION FOR RECONSIDERATION
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`This opinion memorializes the Court’s decision on Plaintiff Jawbone Innovation LLC’s
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`(“Jawbone” or “Plaintiff”) Motion to Reconsideration. ECF No. 94 (requesting reconsideration of
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`ECF No. 93). The Court hereby GRANTS the motion.
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`A.
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`History of the Case
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`This case was filed on September 23, 2021. Apple Inc. (“Apple” or “Defendant”) filed its
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`transfer motion on May 2, 2022. The Court’s Order Governing Proceedings (“OGP”) sets rules
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`governing motions to transfer. OGP § IV. For cases filed before March 7, 2022, the OGP refers
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`to the Second Amended Standing Order Regarding Motions for Inter-District Transfer. Id. The
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`Second Amended Standing Order Regarding Motions for Inter-District Transfer sets a three-month
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`deadline for venue discovery from the filing of the initial motion, another two weeks for the
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`Plaintiff’s response, and another two weeks for the Defendant’s reply.
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`Thus, venue discovery should have concluded on August 2, 2022, which is three months
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`from the transfer motion filing on May 2, 2022. Plaintiff’s response was due on August 16, 2022,
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`which is two weeks thereafter. Defendant’s reply was due on August 30, 2022.
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`Due to Apple’s pending transfer motion, the Court needed to reschedule the Markman
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`hearing originally set for July 27, 2022 to comply with the Federal Circuit’s order. ECF No. 66;
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`Case 6:21-cv-00984-ADA Document 95 Filed 09/20/22 Page 2 of 4
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`ECF No. 76; In re SK Hynix Inc., 835 F. App’x 600, 601 (Fed. Cir. Feb. 1, 2021) (“the district
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`court must stay all proceedings concerning the substantive issues in the case until such time that it
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`has issued a ruling on the transfer motion.”). The Court rescheduled the Markman hearing for
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`September 22, 2022 so that the Court would have at least three weeks to rule on the transfer motion
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`after the conclusion of briefing on August 30, 2022. ECF No. 89.
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`On August 24, 2022, the parties filed a Joint Notice Regarding Venue Discovery and
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`Briefing. ECF No. 86. The Parties modified their own discovery deadlines as permitted by the
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`Court. However, the Parties also improperly modified Jawbone’s opposition deadline to September
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`8, 2022 and Apple’s Reply to September 22, 2022.
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`This modification of the briefing deadline violates the Court’s rules. The Court’s Amended
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`Standing Order Regarding Joint or Unopposed Request to Change Deadlines allows parties to
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`stipulate to any deadline change that “does not extend any deadline of a final submission that
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`affects the Court’s ability to hold a scheduled hearing.” Modifying the transfer opposition deadline
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`without motion violated this rule. Setting Apple’s reply to September 22, 2022—the same date as
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`the Markman hearing—also violates this rule because the Court cannot hold the Markman hearing
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`before ruling on the motion to transfer.
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`Because the parties violated the Court’s deadlines, the Court issued an order (ECF No. 93)
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`striking all transfer briefing (ECF No. 90, 91, 92) filed after August 30, 2022 as untimely and
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`granting Apple’s Motion to Transfer (ECF No. 38) as unopposed.
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`B.
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`The Court DENIES Reconsideration Based on Misunderstanding
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`Jawbone argues that the Court should reconsider its transfer decision because Jawbone
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`believed at all times that it complied with the Court’s rules. In particular, Jawbone believed that
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`changing the transfer briefing deadlines had no effect on a yet-unscheduled transfer hearing.
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`Case 6:21-cv-00984-ADA Document 95 Filed 09/20/22 Page 3 of 4
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`Jawbone did not understand that changing the briefing deadlines would affect the Court’s ability
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`to hold the Markman hearing.
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`The Court finds this inexcusable. The OGP explicitly codifies the SK Hynix mandate from
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`the Federal Circuit. OGP § VI (“If a motion to transfer remains pending, the Court will either
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`promptly resolve the pending motion before the Markman hearing, or postpone the Markman
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`hearing.”). The Court’s rules explicitly describe the relationship between the conclusion of transfer
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`briefing and the ability to hold Markman hearings. The parties must timely file their transfer briefs
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`so that the Court can issue its opinion on any transfer motion before preparing for the Markman
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`hearing.
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`C.
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`The Court GRANTS Reconsideration
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`Jawbone argues that the parties bear joint responsibility for agreeing to changing the
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`briefing deadlines without filing a motion, but the Court’s order disproportionately impacts
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`Jawbone by granting Apple’s motion to transfer. Evidence shows that the parties were both
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`involved in extending transfer briefing deadlines without the Court’s permission.
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`Since the filing of Jawbone’s motion to reconsider, scheduling conflicts arose and require
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`the Court to postpone the Markman hearing anyway. This gives the Court additional time to
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`consider the parties’ late briefing while avoiding the disproportionate impact. The Court will thus
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`VACATE its Transfer Order (ECF No. 93).
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`D.
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`Conclusion
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`IT IS HEREBY ORDERED:
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`Jawbone’s Motion to Reconsider ECF No. 94 is GRANTED. The Court’s Transfer Order
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`(ECF No. 93) is VACATED. Jawbone’s transfer briefing (ECF Nos. 90, 91, 92) are NO
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`Case 6:21-cv-00984-ADA Document 95 Filed 09/20/22 Page 4 of 4
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`LONGER STRICKEN. The Markman hearing set for September 22, 2022 will be rescheduled
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`for a later date. Any remaining transfer briefing is due by September 21, 2022.
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`All counsel are further ORDERED to meet and confer with each other to review the
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`Court’s standing orders. Counsel are reminded to take note of the Court’s recent updates in OGP
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`4.2 and in its pretrial procedures.
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`SIGNED this 20th day of September, 2022.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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