Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`10TALES, INC.,
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`Plaintiff,
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` v.
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`Defendants.
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`JOINT MOTION FOR ENTRY OF DISPUTED SCHEDULING ORDER
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`Plaintiff 10Tales, Inc. (“10Tales”) and Defendant TikTok Inc. (“TTI”) have a dispute
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`regarding the proposed schedule. A proposed schedule comparing 10Tales and TTI’s positions
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`on the Sample Order Governing Proceedings—Patent Case (“Default Schedule”) is set forth in
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`Exhibit A, and each party’s position is set forth below.
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`I.
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`10Tales’ Position
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`Plaintiff 10Tales believes this case should proceed under the Court’s standard Scheduling
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`Order. As a compromise, 10Tales was willing to work with TTI to give the foreign defendants,
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`who claimed to need more time because of a two week shutdown/holiday in February, more time
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`to respond to the Amended Complaint, more time to file any Motion to Transfer, and more time
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`to serve invalidity contentions and related information. But every time 10Tales gave a
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`concession, TTI attempted to push the envelope. When at last, late on Friday, an agreed upon
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`schedule was in place, TTI proffered yet another condition, that is, that 10Tales would forego
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`several months of Court-allotted discovery time for an as yet filed Motion to Transfer by any of
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`the three added Defendants. TTI wanted this concession despite 10Tales’ concerns that it would
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 2 of 9
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`be doing so in a vacuum, totally blind to any knowledge of which party would file a motion,
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`which arguments would be raised by what party, and what facts each individual party would rely
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`on. To be clear, TTI responded to the Original Complaint by filing motions to dismiss, or in the
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`alternative, to transfer. In that motion, TTI argued, inter alia, that the Western District of Texas
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`was an improper venue. It was not until Friday afternoon, January 8, 2021, that Defendants first
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`informed 10Tales that Defendants would no longer be contesting venue, but only in exchange for
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`the accelerated response date to as yet filed transfer motions. This serves to highlight 10Tales
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`reluctance to agreeing to forego the jurisdictional discovery phase permitted by the Court in
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`advance of considering any motion that might (or might not) be forthcoming.
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`Moreover, such a schedule was rather transparent, as even a cursory review of the
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`schedule would demonstrate that TikTok was attempting to get 10Tales to agree to be forced to
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`simultaneously conduct discovery of four (4) parties (at least two of which are foreign and
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`located in China) on transfer-related issues and prepare potentially four (4) oppositions to as yet
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`filed transfer motions and at the same time review and analyze invalidity positions and technical
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`documents in order to consider what claim terms need Court-assisted constructions, prepare
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`Markman briefing, a tutorial, and prepare for and argue the Markman hearing. Indeed, under
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`TikTok’s offer, 10Tales’ combined opposition to the multiple transfer motions would be due two
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`(2) days before the Markman hearing. Such tactics are rather hollow and are nothing more than
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`an attempt by TTI to prejudice 10Tales in its ability to fully and fairly prepare for the Markman
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`issues and properly and fully respond to multiple as yet filed transfer motions.
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`The proposed schedule offered by TTI is acceptable to 10Tales as long as the entry of
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`June 2 relating to a due date for “10Tales respond to all Defendants motion transfers two
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`weeks after transfer-related discovery is complete” is stricken, and 10Tales is given ample
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 3 of 9
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`time to conduct discovery as to the as yet filed transfer motions that is in compliance with the
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`Court’s November 19, 2020 Standing Order Regarding Venue and Jurisdictional Discovery
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`Limits for Patent Cases permitting same.
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`In a final effort to show good faith and avoid the need for Court intervention, 10Tales
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`offered to agree to TTI’s dates, if TTI would agree to split the difference on the disputed date for
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`responding to Defendants’ transfer motions. TTI declined 10Tales’ offer.
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`10Tales believes all the other issues set forth in TTI’s position are inappropriate for this
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`filing and do not warrant a response since the main issue is simply discussed in the above-
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`paragraphs. However, the facts are not as TTI states, and 10Tales would be happy to respond
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`should the Court so request. It is noteworthy, however, that TTI makes numerous statements
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`below about waiving its right to object to venue and personal jurisdiction, when on November
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`19, 2020, TTI filed a motion in this case that venue and jurisdiction are not proper and somehow
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`those facts have changed substantially in that it recently filed an Answer in this Court in another
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`case admitting that venue and personal jurisdiction were proper in this Court. To be clear, it is
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`TTI playing games here and not 10Tales. Moreover, now that the parties’ positions are finalized,
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`10Tales will be serving jurisdictional/transfer-related discovery today.
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`If this Court is inclined to grant TTI’s request to shorten the discovery period for as yet
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`filed motions to transfer by unnamed parties in contravention to its Standing Order on
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`jurisdictional discovery timing and limitations, then 10Tales asserts that the Court should adopt
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`its standard dates according to the schedule set forth in 10Tales’ proposal. TTI and the other
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`named defendants should not benefit from obtaining extra time to respond to an Amended
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`Complaint that has been in their possession since December 10, 2020. Moreover, because of the
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`constant threats of not accepting service, 10Tales has had to expend time and resources to
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 4 of 9
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`personally serve all defendants, except for ByteDance PTE Ltd..
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`In conclusion, 10Tales was and is willing to abide by the agreement it made to the
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`proposed schedule but not the June 2, 2021, limitation as requested by TTI on the timing of
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`10Tales’ opposition to all as yet filed motions to transfer by unnamed parties.
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`II.
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`TTI’s Position
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`Defendants seek minor modifications to the standard schedule, and only through March
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`19, 2021, to accommodate three newly added parties (two international), and thereafter follow
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`the schedule 10Tales proposes, including the Markman hearing date provided by the Court.
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`Specifically, TTI requests the Court (1) allow the new Defendants a brief period of time to
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`respond to the complaint, prepare a motion to transfer, and to prepare invalidity contentions, (2)
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`allow the Defendants to coordinate all such submissions, and (3) allow certain Defendants time
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`to observe the very important Lunar New Year holiday in February. Thus, the Defendants ask
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`that responses, motions to transfer and invalidity contentions be due on March 1, 2021. TTI’s
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`requested modifications only condense the beginning of the case schedule, and does not affect
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`Markman briefing. Moreover, the Defendants are willing to accept service on behalf of
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`Bytedance Ltd., forego motion practice on venue and jurisdiction, and allow discovery on the
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`limited issue of transfer pursuant to 28 USC §1404(a) to start immediately for all parties, even
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`though the new Defendants have not yet responded to the complaint.
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`Accordingly, since all transfer-related discovery should be completed together, and no
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`later than May 19, 2021 (the cutoff for TTI), Defendants request 10Tales respond to all motions
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`to transfer two weeks thereafter, or by no later than June 2, 2021. Given that 10Tales believes all
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`Defendants “are related entities to TTI” and that “infringement as to all Defendants will proceed
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`on the same products and theories,” it is much more efficient to coordinate all discovery.
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`Regarding the hard work parties put in to come to an agreement over the past couple
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`weeks, we note that TikTok conceded to nearly all of 10Tales’ demands, including agreeing to:
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`• Waiver of service for parties not yet served;
`• Expedite the substantive fact discovery period;
`• Coordinate transfer-related discovery for all Defendants, even though they have
`not yet appeared;
`• A reasonable amount of transfer-related discovery will not count against
`substantive fact discovery limits; and
`• Waive the right in this case to file a Rule 12 motion to dismiss for improper venue
`or lack of personal jurisdiction.
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`Accordingly, 10Tales had agreed to the Defendants’ Proposed Schedule on Friday
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`afternoon, except for a single item—the response dates to the transfer motions. For the transfer
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`motion, 10Tales demands 33 weeks for transfer-related discovery, even though fact
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`discovery for the entire substantive case is only 19 weeks. On this single point of contention,
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`Defendants were prepared to present their position to the Court on Friday, January 8th. Friday
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`night, however, 10Tales inexplicably reverted all the way back to its original schedule, negating
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`the prior weeks of negotiations and unilaterally filed a “joint” motion for extension that was not
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`agreed to, reviewed, or authorized by Defendants or its counsel. As explained below, TTI’s
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`position is reasonable and well founded, while 10Tales’ unreasonable positions and improper
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`conduct are meant to drive up the cost of litigation and delay only the transfer motion while
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`expediting all other aspects of the case.
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`Judging from its own actions, Plaintiff’s feigned concern about delay seems
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`disingenuous. 10Tales had knowledge of the new Defendants and that they were related entities
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`based on public information when it filed its original Complaint, yet inexplicably delayed three
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`months in filing an amended pleading adding them to the case. Then 10Tales waited over a
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`month to serve that pleading on the U.S.-based new defendant, and never requested waiver of
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`service pursuant to the Federal Rules for the others. Moreover, 10Tales has promised to serve
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 6 of 9
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`transfer-related discovery for almost two months, yet failed to do so. Any delay with respect to
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`the transfer motion then, is of 10Tales own making.
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`By contrast, Defendants seek to coordinate transfer-related discovery to align with the
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`Court’s Standing Order which provides that the “deadline for Plaintiff’s response [to the transfer
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`motions] is two weeks after the completion of venue or jurisdictional discovery.” Coordinating
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`discovery is important and a reasonable expectation when dealing with the international
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`Defendants, for many reasons, including scheduling depositions (in particular given the Lunar
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`New Year Holidays observed by some of the Defendants for two weeks in mid-February), and
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`identifying translators and a workable platform.1 Thus, since the Defendants have agreed to
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`expedite and coordinate discovery responses to all transfer-related discovery, including
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`depositions, even where a Defendant has not yet appeared in the case—this discovery should be
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`complete by May 19, 2021 (TTI’s cutoff).
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`10Tales has no basis for arguing additional time should be allotted for transfer-related
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`discovery, as it is inconsistent with 10Tales’ position that the case must be expedited. For
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`example, 10Tales demands fact discovery for the entire substantive case last 19 weeks. Yet,
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`10Tales claims it will need 26 weeks for the transfer-related discovery for the new Defendants,
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`in addition to the seven (7) weeks of early-access discovery from the new Defendants (i.e., 33
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`weeks). This makes no sense unless 10Tales is merely seeking to drive up the cost of litigation.
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`There is no justifiable reason why discovery on a single-issue motion to transfer requires
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`1 Initially, Defendants had requested a 90 day extension to the entire schedule, to allow the new
`Defendants to get caught up to TTI’s schedule, reduce the extra work that comes with multiple
`filings for the parties and the Court, and address the important Lunar New Year holiday. Had
`10Tales agreed, there would be no issue with separate answers, contentions, and transfer motions.
`Additionally, 10Tales is not in the dark about the new Defendants’ position on transfer; it knows
`the remaining Defendants will file a motion to transfer, and it has been claiming it will serve
`transfer-related discovery for over a month, but no such discovery has been served.
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 7 of 9
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`twice as much discovery as the substantive fact discovery for the entire patent infringement
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`case. Even if 10Tales waited to start transfer-related discovery until after the new Defendants
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`file their motion to transfer (i.e., March 1, 2021), there is still no reason to provide 11.5 weeks of
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`transfer-related discovery for the new “related” Defendants, given that it is more than half of the
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`entire case’s substantive fact discovery on dozens of issues.
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`Importantly, in order to preserve the parties’ and the Court’s resources, Defendants have
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`agreed to focus the briefing on transfer and have waived the right in this case to file a Rule 12
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`motion to dismiss for improper venue or lack of personal jurisdiction. Thus, 10Tales will only
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`need discovery related to convenience, and not improper venue and/or jurisdiction.
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`10Tales appears to be engaging in a targeted-delay litigation tactic (i.e., delay only where
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`it helps 10Tales), and taking a scorched earth approach to what should be targeted, focused
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`transfer discovery, all in an effort to drive up the costs of this litigation and force a settlement.
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`10Tales’ actions with respect to this submission speak volumes. 10Tales failed to raise the issue
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`with respect to extending the transfer-related discovery period, until Friday morning (January 8).
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`This condition was first mentioned as part of three (3) additional concessions 10Tales was
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`demanding. TTI accepted all conditions, except this one, and agreed to meet and confer.
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`10Tales cancelled the scheduled meet and confer, and instead requested a week-long extension to
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`file this motion. TTI responded that an extension until Monday, January 11, was sufficient for
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`briefing a single issue, particularly since the parties had already sought and obtained a one week
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`extension. 10Tales requested two additional days, and TTI responded that it “will not oppose
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`[its] motion to accommodate your schedule.”
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`About an hour later, TTI asked 10Tales “whether you are filing the motion for an
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`extension, or if we are going to file a joint motion today.” Instead of replying to TTI’s email,
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 8 of 9
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`10Tales unilaterally filed a “joint” motion for an extension of time until January 13, without
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`showing the motion to TTI, without receiving permission to sign the motion, and by signing Mr.
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`Korniczky’s name without ever having spoken to him on the topic. As soon as TTI saw the
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`incorrect motion, TTI objected and requested it be withdrawn.
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`After receiving TTI’s request, 10Tales gave TTI an ultimatum—demanding a response in
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`45 minutes: Either let the joint motion stand, or 10Tales was going to completely reverse all of
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`its positions negotiated the previous week. 10Tales gave TTI 45 minutes to provide its position
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`on the unnegotiated dates. Appalled by counsel’s behavior, no response was given. On Monday,
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`TTI expressed its concern with 10Tales’ conduct, and requested that 10Tales reconsider its
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`position. 10Tales declined.2
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`Accordingly, TTI requests the Court review and adopt the timeline TTI proposes, which
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`includes the dates to which TTI had agreed to as of Friday, January 8, 2021.
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`TTI’S RESPONSE TO 10TALES NEW STATED POSITION
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` TTI diligently prepared its respective responses to 10Tales’ stated positions provided on
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`Friday January 8, and again on Tuesday, January 12. Now, after providing TTI’s response,
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`10Tales yet again has changed its position by completely replacing its previous statement and is
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`unnecessarily driving up the cost of this litigation. For the record, 10Tales has mischaracterized
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`the discussions between the parties. Suffice it to say, TTI has provided a fair and reasonable
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`position and cannot continue to respond to 10Tales’ moving targets or mischaracterizations. TTI
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`is more than happy to submit the correspondence on this matter to the Court for review.
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`Dated: January 13, 2021
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`By:
`/s/ William E. Davis, III
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`2 These discussions are supported by emails, which are available on request.
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`Dated: January 13, 2021
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`By: /s/ Stephen S. Korniczky
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`Case 6:20-cv-00810-ADA Document 40 Filed 01/13/21 Page 9 of 9
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`William E. Davis, III
`Texas State Bar No. 24047416
`bdavis@davisfirm.com
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`Telephone: (903) 230-9090
`Facsimile: (903) 230-9661
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`Barry P. Golob (pro hac vice)
`bgolob@cozen.com
`Thomas J. Fisher (pro hac vice)
`tfisher@cozen.com
`COZEN O’CONNOR
`1200 Nineteenth Street, NW
`Washington, D.C. 20036
`Telephone: (202) 912-4800
`Facsimile: (202) 861-1905
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`Attorneys for Plaintiff 10Tales, Inc.
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`Stephen S. Korniczky (admitted pro hac vice)
`Martin R. Bader (admitted pro hac vice)
`Ericka J. Schulz (admitted pro hac vice)
`SHEPPARD, MULLIN, RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA. 92130
`T: 858.720.8900
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
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`Jason Mueller (State Bar No. 24047571)
`SHEPPARD, MULLIN, RICHTER &
`HAMPTON LLP
`2200 Ross Avenue, 24th Floor
`Dallas, TX 75201
`T: 469.391.7402
`jmueller@sheppardmullin.com
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`Attorneys for Defendant TikTok Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 13, 2021, a true and correct copy of the foregoing JOINT
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`MOTION FOR ENTRY OF DISPUTED SCHEDULING ORDER was filed electronically.
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`Notice of this filing will be sent by operation of the Court’s electronic filing system to all parties
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`indicated on the electronic filing receipt. All other parties will be served by regular U.S. Mail.
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`Parties may access this filing through the Court’s electronic filing system.
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`/s/ William E. Davis, III
`William E. Davis, III
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