Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 1 of 21 PageID #: 914
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`The CALIFORNIA INSTITUTE OF
`TECHNOLOGY,
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`Civil Action No. 2:21-cv-446
`
`JURY TRIAL DEMANDED
`
`
`
`Defendants.
`
`
`
`
`
`PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO TRANSFER
`TO THE CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`
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`

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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 2 of 21 PageID #: 915
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`
`
`TABLE OF CONTENTS
`
`Introduction ......................................................................................................................... 1 
`
`Samsung’s motion to transfer – a thinly disguised effort to seek summary
`adjudication – fails across the board. .................................................................................. 1 
`
`I. 
`
`II. 
`
`A. 
`
`B. 
`
`Samsung is not an intended third-party beneficiary of the PLA. ............................ 2 
`
`Samsung cannot invoke a
`
`
`. .................................................................. 5 
`
`III. 
`
`Samsung’s Claim to a License of the Patents-in-Suit is Unmeritorious. ............................ 6 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`The PLA does not cover the Patents-in-Suit. .......................................................... 6 
`
`The ’710 Patent was not and could not have been a CIP of the ’852
`Application. ............................................................................................................. 7 
`
`The other Patents-in-Suit also are not CIPs of the ’852 Application. ..................... 8 
`
`The parties’ course of conduct corroborates that the Patents-in-Suit were
`not covered by the PLA. ......................................................................................... 9 
`
`The parties sought to confirm their mutual understanding under the
`
`. ................................................................................................................... 10 
`
`F. 
`
`Samsung admits the IV-Samsung Agreement
`
` ....................................... 13 
`
`G. 
`
`Samsung’s remaining arguments cannot support transfer under § 1404. ............. 13 
`
`IV. 
`
`Conclusion ........................................................................................................................ 15 
`
`
`
`
`
`i
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`

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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 3 of 21 PageID #: 916
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Cases
`
`Agence France Presse v. Morel,
`769 F. Supp. 2d 295 (S.D.N.Y. 2011) ........................................................................................3
`
`Alling v. Universal Mfg. Corp.,
`7 Cal. Rptr. 2d 718 (Cal. Ct. App. 1992) ...............................................................................4, 5
`
`Atl. Marine Constr. Co. v. United States Dist. Court for W. Dist. Tex.,
`571 U.S. 49 (2013) .............................................................................................................13, 14
`
`Autodesk, Inc. v. Alter,
`2018 WL 1335858 (N.D. Cal. Mar. 15, 2018) ...........................................................................3
`
`Gen. Protecht Grp., Inc. v. Leviton Mfg. Co.,
`651 F.3d 1355 (Fed. Cir. 2011)......................................................................................4, 14, 15
`
`Goonewardene v. ADP, LLC,
`434 P.3d 124 (Cal. 2019) ...........................................................................................................2
`
`Implicit, LLC v. Juniper Networks, Inc.,
`2020 WL 10356908 (E.D. Tex. Apr. 22, 2020) .......................................................................15
`
`In re Lab’y Corp. of Am. Holdings,
`2022 WL 1498775 (Fed. Cir. May 12, 2022) ..........................................................................14
`
`Peteet v. Dow Chem. Co.,
`868 F.2d 1428 (5th Cir. 1989) .................................................................................................14
`
`Uniloc USA, Inc. v. Cisco Sys., Inc.,
`2017 WL 959856 (E.D. Tex. Mar. 13, 2017) ....................................................................14, 15
`
`Zix Corp. v. Echoworx Corp.,
`2016 WL 7042221 (E.D. Tex. June 9, 2016) .....................................................................14, 15
`
`Statutes
`
`35 U.S.C. § 120 ............................................................................................................................7, 8
`
`35 U.S.C. § 121 ................................................................................................................................8
`
`35 U.S.C. § 365(c) ...........................................................................................................................8
`
`Cal. Civ. Proc. Code § 1856(c) ........................................................................................................9
`
`
`
`ii
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 4 of 21 PageID #: 917
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`
`
`Regulations
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`37 C.F.R. § 1.78 (2001) ...................................................................................................................8
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`37 C.F.R. § 1.78(a)(2) (2001) ..........................................................................................................7
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`
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`iii
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 5 of 21 PageID #: 918
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`
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`I.
`
`Introduction
`
`Samsung’s motion to transfer venue is built on a series of unsupported assertions that fail
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`to coalesce in any way to warrant its requested relief. The Patents-in-Suit1 are indisputably not
`
`covered by any license to Intellectual Ventures or, in turn, to Samsung. None of the Patents-in-
`
`Suit
`
`, nor are the Patents-in-Suit
`
`
`
`. Indeed, the parties to that agreement – Caltech and Cellular Elements (CE) –
`
`expressly agreed that
`
`.
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`In any event, that is a question for a dispositive motion, which Samsung elected not to
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`bring to this Court – instead opting for the procedural tactic of embedding its license defense within
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`a belated transfer motion. This Court can readily dispense of Samsung’s motion to transfer venue
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`on its face because Samsung cannot invoke
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` of a Patent License
`
`Agreement (PLA) between two other parties. Samsung is neither a
`
`
`
`. Allowing Samsung to claim rights under the agreement would be
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`inconsistent with
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`, and Samsung cannot meet the separate hurdle of showing
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`that the
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`deliberately provides
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`. That clause very
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`, and Samsung
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`is not
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`. Finally, Samsung requests transfer pursuant to § 1404 without providing
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`a full § 1404 analysis, further revealing the insufficiency of its motion.
`
`II.
`
`Samsung’s motion to transfer – a thinly disguised effort to seek summary
`adjudication – fails across the board.
`
`As shown below in Section III, Samsung can claim no license to the Patents-in-Suit. But
`
`Samsung has not asked the Court to render a ruling on a dispositive motion. To the contrary,
`
`
`1 The “Patents-in-Suit” are U.S. Patent Nos. 7,116,710 (“the ’710 Patent”), 7,421,032 (“the ’032
`Patent”), 7,916,781 (“the ’781 Patent”), and 8,284,833 (“the ’833 Patent”).
`
` 1
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 6 of 21 PageID #: 919
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`
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`Samsung continues to pursue third-party discovery from Intellectual Ventures on its futile license
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`defense mission. Such discovery will not change the outcome of that defense, but it does
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`underscore why Samsung’s transfer motion is an improper vehicle for resolving the license-
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`existence issue. In any event, there is no basis for Samsung’s contention that its dispute with
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`Caltech should be
`
`, as Samsung cannot claim it is entitled to the benefits of
`
`.
`
`A.
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`Samsung is not an intended third-party beneficiary of the PLA.
`
`Samsung concedes it is not a party to the PLA nor
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`Instead, Samsung asserts it can step into the shoes of CE to invoke
`
`.
`
`. But
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`it cannot. To be a third-party beneficiary under California law, Samsung must show “(1) that it is
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`likely to benefit from the contract, . . . (2) that a motivating purpose of the contracting parties is to
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`provide a benefit to [Samsung], and . . . (3) that permitting [Samsung] to bring its own breach of
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`contract action against a contracting party is consistent with the objectives of the contract and the
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`reasonable expectations of the contracting parties.” Goonewardene v. ADP, LLC, 434 P.3d 124,
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`126-27 (Cal. 2019). The PLA did not contemplate that
`
`
`
`.
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`In Goonewardene, the plaintiff employee sued ADP, which performed payroll services for
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`her employer, for claimed wages. Id. at 130. The California Supreme Court rejected her third-party
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`beneficiary status, holding that even if “a contract between an employer and a payroll company
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`will in fact generally benefit employees,” “the relevant motivating purpose of the contracting
`
`parties is to provide a benefit to the employer.” Id. at 127 (emphasis added). The court further
`
`found that allowing the employee’s suit would be contrary to the contracting parties’ expectations
`
`given (1) the number of employees, (2) the possibility that each of the employees would have a
`
`dispute with the employer, and (3) the ability of employees to sue the employer. Id.; see also
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`
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`2
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`

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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 7 of 21 PageID #: 920
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`
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`Agence France Presse v. Morel, 769 F. Supp. 2d 295, 303 (S.D.N.Y. 2011) (applying California
`
`law and finding that “users” of Twitter were not third-party beneficiaries of a license to Twitter
`
`that also conferred rights on “Twitter’s partners and sublicensees”); cf. Autodesk, Inc. v. Alter,
`
`2018 WL 1335858, at *4 (N.D. Cal. Mar. 15, 2018) (applying California law and finding that
`
`Autodesk was a third-party beneficiary where “Disney repeatedly indicated that the Agreement
`
`would need to cover Autodesk” during the “course of negotiation [of the Agreement]”).
`
`Setting aside that the PLA does not
`
`, the “motivating purpose” of
`
`the PLA was to
`
`to
`
`. Ex. A §§ 1.2, 1.3. There was no “motivating purpose”
`
`. Given (1) the number of potential sublicensees, (2) the
`
`possibility that each of the sublicensees could have a dispute with CE, and (3) the ability of each
`
`sublicensee to raise claims against CE directly, it would contravene Caltech and CE’s reasonable
`
`expectations to allow any of CE’s future valid sublicensees to invoke provisions related to suing
`
`Caltech. While the PLA contemplates that
`
`
`
` Ex. A § 3.3. The only specifically
`
`enumerated right afforded
`
` is that if the PLA
`
`, the
`
`. Id. This sole recitation of a
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`
`
` in
`
`the PLA shows the parties knew how to include such language when they intended to confer a
`
`.
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`Two of the agreements cited by Samsung further demonstrate why the PLA did not
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`contemplate third-party beneficiaries. First, in stark contrast to the PLA, the IV-Samsung
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`Agreement specifically
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` and includes the following
`
`paragraph:
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`3
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 8 of 21 PageID #: 921
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`Ex. C ¶ 11.6. Nothing like this paragraph –
`
`
`
`
`
`
`
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` – appears in the PLA. Second, the agreement in General Protecht Group
`
`(“GPG”) specifically stated that the Licensor “agrees that [the Licensees’] customers are intended
`
`beneficiaries . . . and . . . can enforce such provisions against [the Licensor].” Gen. Protecht Grp.,
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`Inc. v. Leviton Mfg. Co., 651 F.3d 1355, 1358 (Fed. Cir. 2011). The PLA entirely lacks
`
`
`
`.
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`The only license raised in Samsung’s motion to which it is an actual party – its own license
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`agreement with IV – further undermines the position Samsung takes here. Section 11.3 of the IV-
`
`Samsung Agreement explicitly
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` Ex. C § 11.3. The existence of § 11.3
`
`
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`supports the notion that Samsung is not a third-party beneficiary of the Caltech-CE PLA. If, at the
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`time Samsung and IV entered into the IV-Samsung Agreement, Samsung and IV considered
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`Samsung to be a third-party beneficiary of the PLA, there would have been no need for the
`
` in the IV-Samsung Agreement, and they certainly would not have
`
`agreed to an
`
`. Rather, the most reasonable interpretation is that
`
`Samsung and IV did not consider Samsung to be a third-party beneficiary of the PLA.
`
`Finally, Samsung’s citation to Alling is of no avail. In that case, defendant Universal
`
`entered into a Purchase Agreement to buy plaintiff William Alling’s company, Luminoptics, and
`
`to use its “best efforts” to manufacture electronic ballasts. Alling v. Universal Mfg. Corp., 7 Cal.
`
`Rptr. 2d 718, 725-27 (Cal. Ct. App. 1992). At the same time, a related company, SLP, co-owned
`
`by Alling, granted Universal an exclusive license to its patents on electronic ballasts. Id. at 727.
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`4
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`

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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 9 of 21 PageID #: 922
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`
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`When Universal was unsuccessful in manufacturing the ballasts, Alling sued Universal and SLP
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`filed a claim as a third-party beneficiary against Universal. Id. at 729. On appeal, the court found
`
`that SLP could maintain its claim as a third-party beneficiary because “there was substantial
`
`evidence in the record” showing that, “by intent, [SLP] was to be directly and substantially
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`benefited through the anticipated results of the Purchase Agreement.” Id. at 736. Specifically,
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`Alling represented and sought to advance the interests of both Luminoptics and SLP in the
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`negotiations of both the Purchase Agreement and the License Agreement. And “[t]he validity and
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`effectiveness of [both agreements] were mutually contingent upon each other.” Id. In fact, by their
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`“express[]” terms, “neither one could go into effect without execution of the other.” Id.
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`This multi-layered nexus between the agreements, parties, and third-party beneficiary is
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`absent here. The PLA and IV-Samsung Agreement were negotiated separately, years apart, by
`
`different parties. The contract displays
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`. And the
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`“validity and effectiveness” of those agreements are not “mutually contingent upon each other.”
`
`B.
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`Samsung cannot invoke
`
`
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`Even if Samsung could show the PLA contemplated third-party beneficiaries, that does not
`
`resolve whether the intended benefits included
`
`
`
`
`
`
`
`.
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`This necessarily refers to only Caltech or CE. Samsung cannot claim it can receive the benefits of
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`. See Ex. A § 9.10.
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`
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`5
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`

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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 10 of 21 PageID #: 923
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`
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`III.
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`Samsung’s Claim to a License of the Patents-in-Suit is Unmeritorious.
`
`Although this Court may deny Samsung’s motion on the grounds that the PLA provided
`
`no rights for third parties to invoke
`
`, Samsung’s assertion that it has a
`
`license to the Patents-in-Suit also fails. Samsung contends it received a license to the Patents-in-
`
`Suit based on
`
`. But neither the PLA between Caltech
`
`and CE nor the IV-Samsung Agreement
`
`.
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`Samsung does not contest this point. Instead, its entire argument hinges on claiming the
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`Patents-in-Suit are licensed under the Caltech-CE PLA as continuations-in-part (CIP) of the ’852
`
`Application. Samsung Br. at 8. But that is another false premise: none of the Patents-in-Suit is a
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`CIP (or continuation or division) of the ’852 Application, as confirmed by the file histories of the
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`Patents-in-Suit and the course of conduct between Caltech and CE.
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`A.
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`The PLA does not cover the Patents-in-Suit.
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`The PLA licensed
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`id. at 15-18.
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`
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` not and does not cover the Patents-in-Suit.
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`
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`. Id. § 2 (“Patents” definition);
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`6
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 11 of 21 PageID #: 924
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`B.
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`The ’710 Patent was not and could not have been a CIP of the ’852
`Application.
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`Conceding the Patents-in-Suit were not part of the PLA, Samsung instead contends the
`
`asserted ’710 Patent is a CIP of the ’852 Application
`
`. This CIP
`
`argument defies the record and the law. The ’710 Patent was filed on May 18, 2001 as the ’102
`
`Application and listed only U.S. Provisional Application No. 60/205,095 as providing priority.
`
`Ex. D1. Consistent with this, the PTO recognized priority only from provisional application
`
`60/205,095. Ex. D2 (listed under “CONTINUING DATA”); Ex. D3 (same).
`
`Caltech did not take the steps necessary to designate the ’710 Patent as a CIP. Under 35
`
`U.S.C. § 120, in order for a later application to claim the benefit of an earlier-filed application, the
`
`applications must be co-pending, the later application must “contain[] or [be] amended to contain
`
`a specific reference to the earlier filed application,” and the amendment must be made at a time
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`“as required by the Director” of the PTO or the benefit is waived. Ex. E (35 U.S.C. § 120 (2001));
`
`see also Ex. F (37 C.F.R. § 1.78(a)(2) (2001)) (codifying the “Director’s” requirements to claim
`
`such a benefit). Specifically, for an application to claim the benefit of “one or more prior filed
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`copending nonprovisional applications,” the application “must contain a reference to each such
`
`prior application, identifying it by application number” and “indicating the relationship of the
`
`applications.” Ex. F (37 C.F.R. § 1.78(a)(2) (2001)). This reference must be submitted during the
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`pendency of the application, and within the later of four months from the actual filing date of the
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`application or sixteen months from the filing date of the prior application. Id. (“This time period
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`is not extendable . . . [and] the failure to timely submit the reference required by 35 U.S.C. 120
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`7
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 12 of 21 PageID #: 925
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`
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`and this paragraph is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to
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`such prior application.”).
`
`Caltech did not and could not have properly claimed a continuation under 35 U.S.C. § 120
`
`or 37 C.F.R. § 1.78. The ’102 Application (when filed in May 2001) did not include a specific
`
`reference to the application number of a prior, non-provisional application. Caltech never indicated
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`“the relationship of the [’102 and ’852] applications” while the ’102 Application was pending,
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`another requirement of 37 C.F.R. § 1.78. Caltech did not indicate it in the first paragraph, nor did
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`it indicate it in an Application Data Sheet (ADS) that was filed in August 2006. See Ex. D5 at 3
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`(showing that the space on the ADS that would indicate such a relationship was left blank).
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`In November 2004, when responding to an Office Action, Caltech’s attorney added the
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`’852 Application to the first paragraph of the ’102 Application but did not state that the application
`
`was a CIP of the ’852 Application. Ex. D4 at 2. The ’102 Application issued in October 2006 as
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`the ’710 Patent and did not state it was a CIP of any application. Ex. D7 (’710 Patent, cover page).
`
`Nearly two years after the ’710 Patent issued, the PTO incorrectly issued a Certificate of
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`Correction stating the ’710 Patent was a CIP of the ’852 Application, Ex. D6, but that was
`
`erroneous and was subsequently rectified by a second Certificate of Correction that issued on July
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`5, 2022. Ex. G1. This second Certificate corrected the priority claim to read, “This application
`
`claims the priority of U.S. Provisional Application Ser. No. 60/205,095, filed on May 18, 2000.”
`
`Id. Samsung cannot hang its purported license defense on an erroneous and subsequently
`
`superseded Certificate of Correction.
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`C.
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`The other Patents-in-Suit also are not CIPs of the ’852 Application.
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`As the ’710 Patent is not a CIP, its child applications cannot be CIPs, notwithstanding what
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`is stated on their cover pages. To reflect this, the PTO issued Certificates of Correction for the
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`other three Patents-in-Suit that clarify that those patents are not continuations or CIPs of the ’852
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`
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`8
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`

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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 13 of 21 PageID #: 926
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`
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`Application. See Exs. G2-G4. For example, the Certificate of Correction for the ’032 Patent states,
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`“This application is a continuation of U.S. application Ser. No. 09/861,102, filed May 18, 2001,
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`now U.S. Pat. No. 7,116,710, which claims the priority of U.S. provisional application Ser. No.
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`60/205,095, filed May 18, 2000.” Ex. G2. There is thus—correctly—no mention of the ’852
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`Application in any of the Patents-in-Suit.
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`D.
`
`The parties’ course of conduct corroborates that the Patents-in-Suit were not
`covered by the PLA.
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`The parties’ conduct and course of performance confirms that neither the Patents-in-Suit
`
`nor their corresponding applications were licensed by the PLA. See Cal. Civ. Proc. Code § 1856(c)
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`(allowing a contract’s terms to be explained or supplemented by “course of dealing or usage of
`
`trade or by course of performance”). Section 4.1 of the PLA, for example,
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`. Ex. A § 4.1. Section 6.1 of the PLA
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`
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`
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` Id. § 6.1. CE and Caltech complied with these duties
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`for the ’852 Application and the patents that issued therefrom, U.S. Patent No. 7,089,477 and its
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`continuation, U.S. Patent No. 7,716,552: (1) Caltech
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`Decl. ¶ 15; (2) CE
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`Decl. ¶ 12; and (4) CE
`
`, id.; Ex. I; (3) CE
`
`, Farina
`
`, Farina
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`, id.
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`On the other hand, Caltech and CE did the opposite when it came to the Patents-in-Suit.
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`Caltech—
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`. Id. ¶ 11. Caltech—
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`. Id. Caltech never
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`
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`. This is
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`especially significant with respect to the ’102 Application, which had already been filed when the
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`PLA was executed. Had Caltech licensed that application to CE, it would have been obligated to
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`9
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 14 of 21 PageID #: 927
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`, yet it did not. Id. ¶ 14. Nor did CE
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`
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`as it would have been obligated to do. Id. ¶ 11.
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`All of these actions are consistent with the fact that the PLA did not include the Patents-in-Suit.
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`Samsung’s Exhibit 8, which Samsung proffers as evidence of
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`
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`
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`evidence that Caltech did not believe that the PLA covered the ’710 Patent or its child applications,
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` Samsung Br. at 8, is in fact
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`which are now the Patents-in-Suit. Exhibit 8 actually shows that Caltech
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`
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`. Ex. H at CALTECH000021032-33; Farina Decl. ¶ 17. Subsequently, those rights
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`were restored to Caltech.
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`E.
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`The parties sought to confirm their mutual understanding under the
`
`
`
`.
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`As described above, two years after the issuance of the ’710 Patent, the PTO incorrectly
`
`issued a Certificate of Correction stating that the ’710 Patent was a continuation-in-part of the ’852
`
`Application. To avoid any confusion arising from this erroneous Certificate and consistent with
`
`the file history of the ’710 Patent, on September 30, 2011, Caltech and CE agreed to an
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`Amendment – which superseded the original license – clarifying that
`
`. Ex. B § 3a (
`
`).
`
`Specifically, the parties made clear that the
`
`
`
`
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` under the PLA. See Ex. B (
`
`). The Amendment added unequivocal
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`language to the definition of “Patents,” as underlined below:
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`10
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 15 of 21 PageID #: 928
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`Ex. B at 1 (underlining added). Samsung acknowledges this
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` but suggests that another
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`amendment in the same document, made to Paragraph 4.4 of the PLA, effectively
`
`
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`. Samsung Br. at 9. That Paragraph was amended to read as
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`follows:
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`Ex. B at 1-2 (emphasized language cited by Samsung).
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`Samsung’s interpretation is nonsensical and would render the exclusion language a nullity.
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`The whole purpose of
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` – to prevent any potential confusion created by the erroneous Certificate of
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`Correction:
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`11
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 16 of 21 PageID #: 929
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`Ex. B at 2-3. The statements
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` is to be read as if it had been originally written
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`that way (i.e.,
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`) at the time the PLA was first signed in April 2005.
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`Moreover, Paragraph 4.4 is essentially
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`because including it is not in harmony with its tortured interpretation.
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`See Samsung Br. at 9.
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`Samsung claims certain emails show that
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`Id. (citing Samsung’s Exs. 8-10). But all these exhibits show is that the 2004
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`Certificate of Correction was
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`Those emails also do not discuss the amended agreement’s
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`which clarified that the
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`. Consistent with
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`, the PTO later issued Certificates of Correction to remove all priority
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`references to the ’852 Application from all four of the Patents-in-Suit. Exs. G1-G4.
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 17 of 21 PageID #: 930
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`F.
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`Samsung admits the IV-Samsung Agreement
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`Samsung does not contend the Patents-in-Suit were directly listed or licensed under
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`and relies again on its argument that it obtained rights to the ’852 Application
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`and that the Patents-in-Suit are CIPs of that application. For the reasons described above, this
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`provides no license to the Patents-in-Suit. Beyond that, Samsung has not even established which
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`patents and applications were the subject of the IV-Samsung Agreement. Samsung points to § 8.6,
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`Samsung Ex. 3, which refers to
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` that
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`purports to
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`.
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`Samsung Ex. 3 at 11. However,
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` is blank. Id. at
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` In its brief, Samsung cites to two standalone pages from its production and calls
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`them “Att. A.” Samsung Br. at 4, 8 (citing Ex. 4). But those pages
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`and they are, in fact, a subset of
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` Samsung’s attorney declaration
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`cannot establish that this
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`that the ’852 Application was even within the scope of the patents licensed thereunder.
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`G.
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`Samsung’s remaining arguments cannot support transfer under § 1404.
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`Samsung cites Atlantic Marine to argue that when there is a valid
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` or
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`,
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`adjustments may be made to the § 1404 analysis. Atl. Marine Constr. Co. v. United States Dist.
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`Court for W. Dist. Tex., 571 U.S. 49, 62 (2013); Samsung Br. at 5. But that case involved a dispute
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`13
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 18 of 21 PageID #: 931
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`between the actual parties to an agreement about the applicability of
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`, not,
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`as here, a dispute raised by a stranger to the agreement. And Atlantic Marine makes clear that its
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`“analysis presupposes a contractually valid
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`.” 571 U.S. at 62 n.5. Because
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`Samsung is not a party to the PLA and cannot establish it is an intended third-party beneficiary,
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`the Court cannot “presuppose a contractually valid
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`,” Atlantic Marine is
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`inapposite, and a full § 1404 analysis must be undertaken. Samsung has failed to do to so, and the
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`Court may deny Samsung’s motion for this reason alone.2
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`Samsung also cites GPG, Zix, and Uniloc to suggest that it does not need to prove its license
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`defense now but need only show that it is “one-quarter” of the way there. Samsung wrongly
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`contends it “far exceeds “the ‘one-quarter’ mark of the viability spectrum.” Samsung Br. at 8
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`(quoting Uniloc USA, Inc. v. Cisco Sys., Inc., 2017 WL 959856, at *2 (E.D. Tex. Mar. 13, 2017)).
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`Samsung’s arguments fail that threshold based on its own cited cases. Both GPG and Zix Corp. v.
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`Echoworx Corp., 2016 WL 7042221 (E.D. Tex. June 9, 2016), involved settlement agreements
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`between parties to the pending action that were supposed to resolve prior infringement cases. There
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`was no question in either case that the settlement agreements were made between the parties to the
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`actions. GPG, 651 F.3d at 1357; Zix, 2016 WL 7042221, at *1.
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`Uniloc involved a settlement agreement with an explicit clause covering “third party
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`customers [that] are intended to be third party beneficiaries of the agreement, and are ‘entitled to
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`enforce the licenses and/or covenants not to sue without joinder of Microsoft as a party.’” Uniloc,
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`2 Samsung’s motion should also be denied under the § 1404 inquiry because Samsung delayed its
`request until more than seven months after the complaint was filed and despite its awareness of its
`IV license and purported defense. See Peteet v. Dow Chem. Co., 868 F.2d 1428, 1436 (5th Cir.
`1989) (holding that the defendant must bring the transfer motion with “reasonable promptness”).
`In re Lab’y Corp. of Am. Holdings, 2022 WL 1498775, at *2 (Fed. Cir. May 12, 2022) (holding
`that an untimely transfer motion was not excusable where the party seeking transfer could identify
`no “material change in facts or law [to] justif[y] its delay in seeking transfer”).
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`14
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 19 of 21 PageID #: 932
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`
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`2017 WL 959856, at *3 (quoting settlement agreement between Uniloc and Microsoft). Similarly,
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`the contract in Implicit, LLC v. Juniper Networks, Inc., 2020 WL 10356908 (E.D. Tex. Apr. 22,
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`2020), involved a covenant not to sue Intel’s customers, and the defendants asserting that contract
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`as third-party beneficiaries were Intel customers, i.e., the intended beneficiaries of that provision.
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`Id. at *3.
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`In contrast, the PLA is
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`, and Samsung is not a party to it. And
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`the PLA
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`. When all that is offered “is a license and a bare allegation that it
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`provides a defense to the claims in suit,” such arguments will be rejected. Zix, 2016 WL 7042221,
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`at *2 (noting that “the Federal Circuit rejected the extreme idea” behind such arguments (citing
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`GPG, 651 F.3d at 1359)). Here, Samsung points to a license to which it is not a party (unlike in
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`GPG and Zix) and under which it is not an intended third-party beneficiary (such as in Uniloc and
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`Implicit), relies on
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` that is limited to
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`, and
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`then makes the bare allegation that the license “provides a defense to the claims in suit” even
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`though the
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`. Samsung cannot use these attenuated
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`assertions to demand transfer and its motion should be denied.
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`IV. Conclusion
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`Samsung’s motion should be denied.
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`DATED: August 17, 2022
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`Respectfully submitted,
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`By:
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`/s/
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`Kalpana Srinivasan
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`Kalpana Srinivasan
` California State Bar No. 237460
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`ksrinivasan@susmangodfrey.com
`SUSMAN GODFREY LLP
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
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`15
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 20 of 21 PageID #: 933
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`
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`Telephone: (310) 789-3100
`Facsimile: (310) 789-3150
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`Daniel J. Shih
` Washington State Bar No. 37999
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`dshih@susmangodfrey.com
`SUSMAN GODFREY LLP
`401 Union Street, Suite 3000
`Seattle, WA 98101
`Telephone: (206) 516-3880
`Facsimile: (206) 516-3883
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`Shawn D. Blackburn
`
`Texas State Bar No. 24089989
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`sblackburn@susmangodfrey.com
`Daniel A. Wilson
`
`Texas State Bar No. 24070859
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`dwilson@susmangodfrey.com
`SUSMAN GODFREY LLP
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002
`Telephone: (713) 651-9366
`Facsimile: (713) 654-6666
`
`Ravi Bhalla
`New York State Bar No. 5478223
`rbhalla@susmangodfrey.com
`Robert Greenfeld
`New York State Bar No. 2824811
`rgreenfeld@susmangodfrey.com
`SUSMAN GODFREY LLP
`1301 Avenue of the Americas, 32nd Fl.
`New York, NY 10019
`Telephone: (212) 336-8330
`Facsimile: (212) 336-8340
`
`ATTORNEYS FOR PLAINTIFF
`THE CALIFORNIA INSTITUTE OF
`TECHNOLOGY
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`16
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`Case 2:21-cv-00446-JRG Document 62 Filed 08/19/22 Page 21 of 21 PageID #: 934
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 17, 2022, all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system.
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`Dated: August 17, 2022
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` /s/
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`Kalpana Srinivasan
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`Kalpana Srinivasan
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`17
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