Wireless Recognition Technologies LLC v. A9.com, Inc. et al

Filing 109

RESPONSE in Opposition re 104 Cross MOTION to Sever Pursuant to Rules 20 and 21 of the Federal Rules of Civil Procedure filed by Wireless Recognition Technologies LLC. (Attachments: # 1 Exhibit A - United States District Court, Eastern District of Texas, Sherman Division; Case No. 4:10-cv-435; Oasis Research, LLC v. Adrive, LLC, et. al.; Report and Recommendation of United States Magistrate Judge, # 2 Text of Proposed Order)(Tousi, Cameron)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
v.
A9.COM, INC.,
AMAZON.COM, INC.,
GOOGLE, INC.,
NOKIA, INC.
and
RICOH INNOVATIONS, INC.
Defendants.
WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
v.
NOKIA CORPORATION, and
RICOH COMPANY, LTD
Defendants.
WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
v.
A9.COM, INC.,
AMAZON.COM, INC.,
GOOGLE, INC.,
NOKIA, INC.
and
RICOH INNOVATIONS, INC.

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C.A. No. 2:10-cv-00364-TJW-CE

JURY TRIAL DEMANDED

C.A. No. 2:10-cv-00365-TJW

JURY TRIAL DEMANDED

C.A. No. 2:10-cv-00577-TJW-CE

JURY TRIAL DEMANDED

Defendants.
WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
v.
NOKIA CORPORATION, and
RICOH COMPANY, LTD
Defendants.

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C.A. No. 2:10-cv-00578-TJW-CE

JURY TRIAL DEMANDED

PLAINTIFF WIRELESS RECOGNITION TECHNOLOGIES LLC’S
OPPOSITION TO DEFENDANTS’ CROSS-MOTION TO SEVER PURSUANT TO
RULES 20, 21 OF THE FEDERAL RULES OF CIVIL PROCEDURE

I.

Defendants’ Cross-Motion to Have the Cases Severed and Tried Separately Should
be Denied
Defendants state that if the Court decides the trial consolidation issue now, then they

cross-move to sever the cases pursuant to Fed. R. Civ. Proc. 20 and 21. 1 While the former Rule
determines when different defendants may be joined, the latter permits the Court to sever claims
as well as parties.
In this proposition, Defendants state that Rule 20 permits multiple defendants to be joined
in a single action only if plaintiff’s allegations arise out of the same transaction or occurrence,
and a question of common law or fact arises in the action. Defendants further recite Fifth Circuit
precedent regarding Rule 20, as having a two-part conjunctive test, holding that the claims arise
out of the same transaction or occurrence, and that there is at least one common question of law
or fact linking claims. Citing, Acevedo v. Allsup’s Convenience Stores, Inc., 600 F.3d 516, 521
(5th Cir. 2010).
Contrary to the Defendants’ position, however, their acts indeed arise out of the same
transaction and occurrence, and common questions of law and fact do arise. Each Defendant
offers software that is downloadable to a mobile device, and that performs recognition of objects
in an allegedly infringing manner, under patents related by specification, inventorship, priority
date and assignee. 2 In fact, “[c]ourts in this District have consistently held that as long as the
Defendants’ allegedly infringing products are not dramatically different, then determining

1

287PDA (“364 Case”) Dkt. No. 104; 287PIA (“365 Case”) Dkt. No. 33; 474PDA (“577 Case”)
Dkt. No. 48; 474PIA (“578 Case”) Dkt. No. 35.
2
For A9, compare 287PDA (“364 Case”) Dkt. No. 1, ¶ 14 to 474PDA (“577 Case”) Dkt. No 1, ¶
14. For Amazon, compare 287PDA (“364 Case”) Dkt. No. 1, ¶ 20 to 474PDA (“577 Case”) Dkt.
No 1, ¶ 20. For Google, compare 287PDA (“364 Case”) Dkt. No. 1, ¶ 26 to 474PDA (“577
Case”) Dkt. No 1, ¶ 26. For Nokia, compare 287PDA (“364 Case”) Dkt. No. 1, ¶ 32 to 474PDA
(“577 Case”) Dkt. No 1, ¶ 32. For RII, compare 287PDA (“364 Case”) Dkt. No. 1, ¶ 38 to
474PDA (“577 Case”) Dkt. No 1, ¶ 38.
1

Defendants’ liability will involve substantially overlapping questions of law and fact.” Oasis
Research v. ADrive, et al., Report and Recommendation of United States Magistrate Judge, No.
4:10-cv-435 (E. D. Tex. May 23, 2011). 3
This District has provided multiple sources of support for this position entirely consistent
with Fifth Circuit precedent. Id. (“See, e.g., Eolas Tech., Inc. v. Adobe Systems, Inc., No. 6:09CV-446, 2010 WL 3835762, at *2 (E.D. Tex. Sept. 28, 2010) (holding ‘adjudicating
infringement will require construing the claims and evaluating the patents’ innovation over the
prior art...will involve substantially overlapping questions of law and fact’); Adrain v. Genetec,
Inc., No. 2:08-CV-423, 2009 WL 30633414, at *2 (E.D. Tex. Sept. 22, 2009) (‘license plate
recognition system[s]’ sold by unrelated defendants were sufficiently similar to be of the same
transaction or occurrence); MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455, 457 (E.D. Tex.
2004) (‘severance could be appropriate if the defendants’ methods or products were dramatically
different’).”)
Furthermore, the Federal Circuit has already decided this very issue in an unpublished
order on a writ of mandamus, in full support of WRT’s present position. Oasis Research, supra,
at 5, citing Eolas Tech., Inc. v. Adobe Systems, Inc., No. 6:09-cv-446, 2010 WL 3835762, at *2
(E.D. Tex. Sep. 28, 2010). There, the facts were more favorable to defendants than at present, as
the plaintiff accused twenty-three unrelated defendants of infringing two different patents. In
holding that liability will involve substantially overlapping questions of law and fact and that
joinder was therefore proper, the Court noted that all of the defendants were accused of
infringing the patents, and that determining infringement will require claim construction and

3

Exhibit A at 4.
2

prior art evaluation. 4 The bases for the decision are no different than for Plaintiff WRT and
Defendants at present.
The Federal Circuit also highlighted the significant role of judicial economy as it upheld
the lower court’s decision not to sever the claims, stating: “judicial economy plays a paramount
role in trying to maintain an orderly, effective, administration of justice and having one trial
court decide all of these claims clearly furthers that objective.” Oasis Research, supra, quoting
In re Google, Inc., Misc. No. 968, 2011 WL 772875 at *2 (Fed. Cir. Mar. 4, 2011). For WRT
and Defendants in the present circumstance, it can hardly be argued the questions of law and fact
are any less substantial, or that such principles of judicial economy would less readily apply. Id.
(“Further, the district court noted that, in this case, ‘adjudicating infringement...will involve
substantially overlapping question of law or fact.’”)
To promote their position, Defendants also cite the legislative intent behind the newly
enacted Leahy-Smith America Invents Act, which was enacted into law on September 16, 2011.
H.R. 1249, 112th Cong. (2011).
However, Defendants’ position is completely meritless, for the very language of the new
law makes it abundantly clear that the amendments made to the joinder section apply exclusively
to civil actions “commenced on or after the date of the enactment of [the] Act.” Id., Sec. 19(e)
(emphasis added). Accordingly, to follow Defendants’ counsel would be to violate the very Act
they use to propound their position. No better evidence of the legislative intent exists than the
very language of the Act, itself.
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“In Eolas Tech, the plaintiff accused twenty-three unrelated defendants of infringing two
different patents, and the Court held joinder was proper, stating ‘[a]ll defendants are accused of
infringing the patents in suit, and adjudicating infringement will require construing the claims
and evaluating the patents’ innovation over the prior art. Thus, determining defendants’ liability
will involve substantially overlapping questions of law and fact.’” Oasis Research, supra,
quoting Eolas Tech, 2010 WL 3835762 at *2.
3

Finally, Defendants would have the Court decide their pending motions to transfer
venue 5 before the issue of consolidation so that the Court hearing the cases can structure them
for discovery, claim construction dispositive motions and trial. However, as noted in WRT’s
replies concerning consolidation, 6 and contrary to Defendants’ assertion, were the Court to
transfer to the Northern District of California, it would be easier for the latter court’s
administration of justice to attend to a single, consolidated case rather than four, and the new
court would have the benefit of this Court’s knowledge and ruling after having reviewed the
issues respecting consolidation. Furthermore, were the cases to be transferred as one, the new
court would have opportunity, if it so chose, to sever the cases pursuant to the arguments
Defendants present in their cross-motions under Fed. R. Civ. Proc. 20 and 21. 7
II.

Conclusion
WRT requests that the Court deny Defendants’ cross-motion to sever the cases for trial.

WRT also respectfully reiterates the position of its pending motions 8 that the Court consolidate
the cases pursuant to Fed. R. Civ. P. 42(a) and L. R. CV-42(b). Defendants’ additional proposals,
namely that (i) the parties be ordered to submit a revised consolidated case schedule, and (ii) the
Court should set a case management conference or a briefing schedule to address the division
and order of the issues to be tried, shall be unnecessary once the cases are consolidated and
Defendants’ proposed cross-motion to sever is denied.

5

287PDA (“364 Case”) Dkt. Nos. 62, 68, 73 and 78; 287PIA (“365 Case”) Dkt. No. 21, 22;
474PDA (“577 Case”) Dkt. No. 36, 37; 474PIA (“578 Case”) Dkt. No. 22, 24.
6
287PDA (“364 Case”) Dkt. Nos. 108; 287PIA (“365 Case”) Dkt. No. 37; 474PDA (“577 Case”)
Dkt. No. 52; 474PIA (“578 Case”) Dkt. No. 39.
7
287PDA (“364 Case”) Dkt. No. 104; 287PIA (“365 Case”) Dkt. No. 33; 474PDA (“577 Case”)
Dkt. No. 48; 474PIA (“578 Case”) Dkt. No. 35.
8
287PDA (“364 Case”) Dkt. Nos. 108; 287PIA (“365 Case”) Dkt. No. 37; 474PDA (“577 Case”)
Dkt. No. 52; 474PIA (“578 Case”) Dkt. No. 39.
4

Dated: October 11, 2011

Respectfully Submitted,

/s/ Cameron H. Tousi
William E. Davis, III
Texas State Bar No. 24047416
The Davis Firm, P.C.
111 W. Tyler St.
Longview, Texas 75601
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
Of Counsel
Cameron H. Tousi
David M. Farnum
Ralph P. Albrecht
Albrecht Tousi & Farnum, PLLC
1701 Pennsylvania Ave, NW Ste 300
Washington, D.C. 20006
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiff
WIRELESS RECOGNITION
TECHNOLOGIES LLC

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CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R.
Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
consented to electronic service were served with a true and correct copy of the foregoing by
email, on this the 11th day of October, 2011.
/s/ Cameron H. Tousi
Cameron H. Tousi

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(h), and on behalf of the Plaintiff filing this motion,
Plaintiff’s counsel, Cameron Tousi held a teleconference with Michael Smith and Daniel
Shvodian, counsel for Defendants A9.com, Inc., Amazon.com, Inc., Google Inc., Michael Smith
and Allison Altersohn, counsel for Nokia Inc., and Mark Rowland, counsel for Ricoh
Innovations, Inc., regarding Defendants’ Cross-Motion to Sever Pursuant to Rules 20 and 21 of
the Federal Rules of Civil Procedure on several dates, including most recently on July 14, 2011.
Plaintiff had proposed consolidating four cases filed by Plaintiff (the ‘364, ‘365, ‘577, and ‘578
cases) into a single action. Defendants rejected the proposed consolidation, and proposed that the
issue be addressed, if at all, later in the case. Defendants also proposed in the alternative, that the
cases be severed and consolidated into four separate cases against: (1) Google Inc; (2)
Amazon.com, Inc. and A9.com, Inc.; (3) Nokia Inc. and Nokia Corporation; and (4) Ricoh
Innovations, Inc. and Ricoh Company, Ltd. Not able to achieve consensus, Plaintiff’s counsel
proceeded with filing a motion to consolidate the four cases. Therefore, there was a conclusive
impasse between the parties regarding Defendants’ proposed severance, leaving an open issue
for the Court to resolve.

Dated: October 11, 2011
/s/ Cameron H. Tousi
Cameron H. Tousi
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