Case 2:16-cv-00741-RWS Document 264 Filed 09/19/17 Page 1 of 5 PageID #: 5098
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC. et al.,
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`v.
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`ADP, LLC, et al.,
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`BLACKBOARD, INC.
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`No. 2:16-cv-00741-JRG
` LEAD CASE
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`No.: 2:16-cv-00859-RWS
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`Plaintiffs,
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`Defendants.
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`BLACKBOARD’S REPLY IN SUPPORT OF ITS MOTION FOR RECONSIDERATION
`OF THE COURT’S DISMISSAL ORDER (CASE NO. 2:16-cv-00859-RWS, DOCKET
`NO. 28) AND TO AWARD ATTORNEY’S FEES AGAINST PLAINTIFFS SINCE THE
`SUPREME COURT’S TC HEARTLAND DECISION
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`Blackboard respectfully replies in support of its motion for an award of attorney’s fees
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`dating back to the Supreme Court’s decision in TC Heartland.
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`1.
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`Uniloc argues that Blackboard is not entitled to reconsideration of the Court’s
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`dismissal. To be clear, Blackboard is not seeking reconsideration of the dismissal. Blackboard
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`does not disagree that Uniloc had the right, under Rule 41, to dismiss this case without prejudice,
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`because Blackboard had not answered, given the pendency of its motion to dismiss. The instant
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`motion is styled as a motion for reconsideration only because the Court’s dismissal order states
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`that each party should bear its own fees. This is not a typical request for reconsideration, where
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`an issue was briefed and decided. Blackboard is not seeking reconsideration of any substantive
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`decision by the Court, because the issue of attorney’s fees was never briefed. Rather, Uniloc
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`submitted a notice of dismissal with a proposed order, and the Court entered it. Because
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`Case 2:16-cv-00741-RWS Document 264 Filed 09/19/17 Page 2 of 5 PageID #: 5099
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`Blackboard seeks a partial award of its attorneys’ fees, a motion for reconsideration was
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`required.
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`2.
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`Uniloc’s assertion that it acted in good faith after TC Heartland is belied by its
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`own paper. Uniloc’s response boils down to the following, on page 9:
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`In view of the foregoing, venue was proper in this Court.
`Nonetheless, Uniloc had to consider the possibility that the Court
`may grant Blackboard’s request to transfer this case to the District
`of Columbia. Such a transfer would be very inconvenient for
`Plano-based Uniloc. Accordingly, Uniloc determined that the best
`course of action would be to dismiss this case and to file a new
`case in WDTX in which Blackboard has at least two physical
`places of business and hundreds of employees.
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`Opp. at 9. This only establishes that attorney’s fees are appropriate. It would be one thing if
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`Uniloc were claiming: We had a good-faith basis after TC Heartland that venue was proper, but
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`we took discovery and determined it was not, so we promptly voluntarily dismissed. That would
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`have been Uniloc admitted error and then doing the right thing. But Uniloc is claiming the
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`opposite: We believed venue was proper, and discovery confirmed our belief, but we sought an
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`advantage over Blackboard by delaying dismissal and forcing Blackboard to engage in months
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`of unnecessary work and then dismissed anyway.
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`Uniloc claims that voluntarily dismissed Blackboard because it had to “consider the
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`possibility that the Court may grant Blackboard’s request to transfer this case to the District of
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`Columbia.” Id. That makes it sounds like Blackboard had moved to transfer this case pursuant
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`to 28 U.S.C. § 1404. But Blackboard had filed no such motion. Blackboard moved to dismiss
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`the case.1 The Court could only have transferred the case to the District of Columbia if it
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`1 In response to the Court’s Order June 2, 2017 Order (Doc. 160), Blackboard identified
`the District of Columbia as the transferee venue it deemed most appropriate if the Court
`transferred the case in lieu of dismissal pursuant to 28 U.S.C. § 1406. (Doc. 175). Even in that
`paper, however, Blackboard stated: “Plaintiffs should have stipulated to dismissal the day TC
`(continued…)
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`Case 2:16-cv-00741-RWS Document 264 Filed 09/19/17 Page 3 of 5 PageID #: 5100
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`concluded that venue was improper in this Court. Uniloc, however still contends that venue was
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`proper. So what Uniloc is really saying is: We believed venue was proper, and discovery
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`established it was proper, but we voluntarily dismissed because we believed the Court might get
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`the law wrong. Even if that were legitimate, under that view of the world, nothing changed
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`between TC Heartland and the Markman hearing. Uniloc claimed in the wake of TC Heartland,
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`it believed venue was proper and still believes that. According to Uniloc, its venue discovery
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`only confirmed what it already believed. Its decision to dismiss was not because of anything that
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`happened in the months after TC Heartland but rather in spite of everything that happened. So
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`why not dismiss Blackboard when TC Heartland was decided? Why delay dismissal and force
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`Blackboard to engage in extensive document discovery, three depositions (including a Rule
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`30(b)(6) deposition on the merits), claim construction exchanges and briefing, creation of a
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`technology tutorial, participation in a Markman hearing, and preparation for a second one
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`(rescheduled because of Uniloc’s bad conduct)? Uniloc provides no explanation in its
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`opposition. Nor does Uniloc address Mr. Foster’s astonishing statement at the Markman
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`hearing: “I don’t know if venue is important enough to tax the judge with close questions.” Tr.
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`79:23-24.
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`The answer is obvious. Uniloc was trying to drive up Blackboard’s attorney’s fees to
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`force a settlement. It succeeded in the first objective, but not the second. If Uniloc intended to
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`dismiss its claims against Blackboard despite what it claims was proper venue, it was obligated
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`to do so before litigating over whether venue was proper and over claim construction and over
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`the merits of infringement and invalidity—especially because venue was not “important enough”
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`Heartland was decided. Blackboard respectfully request that the Court dismiss this case without
`delay by granting Blackboard’s pending motion to dismiss.”
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`Case 2:16-cv-00741-RWS Document 264 Filed 09/19/17 Page 4 of 5 PageID #: 5101
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`to wait for the Court’s decision. Uniloc’s tactics are quintessential good cause of an award of
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`attorney’s fees. They unreasonably and vexatiously multiplied the cost of this litigation. Uniloc
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`should pay the increased fees and costs.
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`Respectfully served,
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`/s/ Michael S. Nadel
`J. Thad Heartfield (Texas Bar No. 09346800)
`The Heartfield Law Firm
`2195 Dowlen Road
`Beaumont, Texas 77706
`(409) 866-3318
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`Michael S. Nadel
`MCDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`(202) 756-8000
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`Daniel R. Foster
`Christopher D. Bright
`McDermott Will & Emery LLP
`4 Park Plaza, Suite 1700
`Irvine, California 92614
`(949) 851-0633
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`Attorneys for Defendant Blackboard Inc.
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`Case 2:16-cv-00741-RWS Document 264 Filed 09/19/17 Page 5 of 5 PageID #: 5102
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 19, 2017, the foregoing was electronically filed with
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`the CM/ECF system, which will send a notification of such filing to all counsel of record.
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` /s/ Michael S. Nadel
` Michael S. Nadel
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