Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 1 of 57
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`REDACTED VERSION
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`10TALES, INC.,
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`Plaintiff,
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` v.
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ REPLY IN SUPPORT OF ITS
`MOTION TO TRANSFER UNDER 28 U.S.C. § 1404
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`

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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 2 of 57
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`This case is analogous to In re TracFone Wireless and In re Apple. In re TracFone
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`Wireless, Inc., No. 2021-136, 2021 WL 1546036, *2-3 (Fed. Cir. Apr. 20, 2021); In re Apple
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`Inc., 979 F.3d 1332, 1339-47 (Fed. Cir. 2020). In this case, the Parties’ extensive venue-based
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`discovery proves that “several of [Defendants’] likely employee witnesses resid[e] in the
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`transferee venue,” and not “a single potential witness [is] within or even close to Waco, Texas.”
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`TracFone, 2021 WL 1546036, at *2-3. Moreover, just as in TracFone and Apple, all other
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`convenience factors favor transfer or are neutral. Defendants’
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` office and
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` is in N.D. Cal. while 10Tales’ lack of any connection to Texas whatsoever.
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`Thus, venue-transfer is warranted.
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`I.
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`CORRECTING THE RELEVANT VENUE RECORD
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`Unable to win on the facts, 10Tales has resorted to mischaracterizing the evidence. First,
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`10Tales’ unsupported statement that Defendants’ businesses are interwoven ignores that they
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`comply with corporate formalities and, in any event, would not affect the convenience analysis in
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`this case. See Opp. at 1 n.3; see also Supplemental Declaration of Nicola Raghavan (“Supp.
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`Raghavan Decl.”), ¶¶9-10
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` The record shows that the epicenter of this case is the N.D. Cal. Defendants
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`confirmed this in its responses to 10Tales’ 15 interrogatories, 71 document requests, and 39
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`deposition topics (requiring
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`Rule 30(b)(6) designated deponents). These responses included
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` Defendants have
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 3 of 57
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`Id., 96, Exs. 1-2.
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`Second,Po Defendants’ designated witness with respect to technical topics,
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`Declaration of Ericka Schulz (“Schulz Decl.”’), Ex. 1,Po
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`a. Thus, given fil testimony and thea. there was no reason for ij
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`1
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`Nonetheless, even with Defendants’ thorough document production and testimony,
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`10Tales distorts and mischaracterizesPe testimony to argue Defendants’ Mountain
`Viewoffice is| and the Austin officeTTT Opp. at 1-4. Taking
`a testimony out of context, 10Tales cites ie
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`specifically asked about the Texasoffice,PO
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`10Tales ignores that when
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` did corroborate
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`' Contrary to 10Tales’ false assertions,
`in
`deposition,
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`declaration statements
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 4 of 57
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`. In an attempt to avoid creating a full and truthful
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`record, 10Tales canceled
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` deposition, i.e., the witness designated on
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` on the eve of
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` deposition. Schulz Decl., Ex. 1,
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`.
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`Third, unlike Defendants, 10Tales’ Founder, CEO, and only employee David Russek, has
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`not been forthcoming with information.
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`Moreover, 10Tales cannot explain why documents it filed with the USPTO, California and
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`Pennsylvania Secretaries of State, and SEC identifying an N.D. Cal. office as its principal place
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`of business in Menlo Park have never been corrected, nor produced in this case. Schulz Dec.,
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`Exs. 5-11;
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`Russek does do, however, is evade simple questions, such as
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` What Mr.
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`Defendants will revisit this topic in fact discovery.
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`II.
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`ANALYSIS
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`A.
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`Relative Ease of Access to Sources of Proof
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`The “Relevant” documents in this case relate to the TikTok application, its databases, and
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`the “recommendation system” located in
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` Hard copy notes or documents generated and stored
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`-3-
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 5 of 57
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 5 of 57
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`locally |)iitteamswill be located in N.D.Cal. PF
`| Therefore, “[k]eeping this case in the [Western] District of Texas will impose a
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`significant and unnecessary burden on [Defendants] to transport documents that would not be
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`incurred if the case were to proceed in the Northern District of California.” Jn re Genentech,
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`Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009).
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`Further, 10Taleshas failed to identify a single source of proof in W.D. Tex.’ Todetract
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`from its failure, 10Tales argues[gl
`|| This ignores the fact that the teams accessing these documents in the U.S.are in
`ee
`ee
`a. Therefore, this factor favors transfer.
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`B.
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`Availability of Compulsory Process to Secure Witness Attendance
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`Based on 10Tales’ complaint and infringement contentions, non-party witnesses are
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`located in N.D. Cal—and 10Tales cannot walk away from its allegations to avoid transfer. The
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`Amended Complaint, although vague and incomplete, claims that Defendants’ purported
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`“collect[ion of] user attribute information from” “Facebook, Twitter, Instagram, or Google,” is
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`“significant” to this case. Dkt. 28, §§]60 63; see also Schulz Decl., Ex. 12a. As a result,
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`10Tales has put witnesses at these four companiesdirectly at issue. Moreover, 10Tales’
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`software, purportedly covered by the 030 patent, likewise deals with the similar, if not the same,
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` 10Tales’ arguments regarding “party witnesses” (Opp. at 10-11) bare no weight because
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`“witnesses are not sources of proof to be analyzed underthis factor.” See Precis Grp., LLC v.
`TracFone Wireless, Inc., No. 6-20-CV-00303-ADA, 2021 WL 932046, at *5 (W.D. Tex. Mar.
`11, 2021) (vacated on other grounds).
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 6 of 57
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 6 of 57
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`social networkcompanies,
`Po Giventhat all ofthese companies are based in N.D. Cal., and
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`Po this factor favors transfer. Jn re Apple, Inc., 581
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`F.App'x. 886, 889 (Fed. Cir. 2014) (This factor “weigh[s] heavily in favorof transfer when more
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`third-party witnesses reside within the transferee venue than reside in the transferor venue.”).
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`Moreover, 10Tales’ infringementallegations do notrelate to distribution technology, and
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`extent distribution is at issue in this case, Google and Apple employees located in N.D.Cal. a
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`A RN2 isen ff tesiiea te
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`in advon, 10Tales
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`SS:
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`Po Defendantsare entitled to explore this relationship.
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`* 10Tales’ argument that
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`Opp. at 12 n.16. 10Tales’ accusations question what information
`social media companies provide to Defendants, not what they receive, and is relevant to user
`infringement. Once 10Tales providessufficient infringementallegations identifying the
`information these social media companies provide relevant to the asserted claim, Defendants will
`investigate which personnel have relevant information at these social media companies.
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 7 of 57
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 7 of 57
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`Ths,iii
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`In sum,neither party hasidentified a single relevant non-party witness in Texas,but
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`both have identified a plethora of potential non-party witnesses in N.D. Cal. Although
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`Defendants cannot identify specific third party witnessesat this time, such witnesses can be
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`identified once discovery is open. Therefore, this factor favors transfer.
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`Cc.
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`Cost of Attendance for Willing Witnesses
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`The majority of party witnesses identified who may potentially testify at trial are located
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`in N.D. Cal. It is undoubtedly far more reasonable and economical for these witnesses to refrain
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`from flying to Texas, renting a car and hotel, and being away from their families, teams, and
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`workto attend trial. Further, to the extent any non-party witnesses identified at the N.D. Cal.
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`companies discussed above are willing to attend trial, it would also be more convenient for them
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`if this case is transferred. Therefore, this “single most important factor in the transfer analysis”
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`weighs in favorof transfer. See Precis Grp., LLC v. TracFone Wireless, Inc., No. 6-20-CV-
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`00303-ADA, 2021 WL 932046,at *7 (W.D. Tex. Mar. 11, 2021).
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`10Tales interrogated Defendants’ witnesses on a of the allegedly most important
`technical topics related to the ‘030 patent. Pp Po identifiedP|
`PF with respect to these topics. Section II supra. Thus,Po
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`po are the relevant witnesseslikely to testify to the technical aspects of this case at
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`trial—and 10Tales cannot dictate otherwise.© Nor can 10Tales demandto knowtheidentity of
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`° The ownerofa priorart reference cited in Defendants’ invalidity contentionsis nota potential
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`witness, nor relevant to this case.
`at 8n.10.
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`© 10Tales speculates that
`opting for expert testimony in
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`a stead. Opp. at 11 n.14. Notso.
`andis in
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`all persons knowledgeable about every technical documentto call them at trial. See Opp. at 5.
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`Likewise, 10Tales cannot unilaterally dictate thi
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`is the most knowledgeable about Defendants’ costs, revenue and profits related to damages.
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`Indeed,Pe in Mountain Viewis far more qualified to
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`testify regarding the Defendants’ revenue, costs, and profits related to the damages analysis.
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`ES
`such,|| would be the most relevant witnessto testify about[i
`PS a memberofthe sales eon(iii
`Id. Moreover, 10Tales’ scattershot identification ofp witnesses does not pass muster.’
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`This Court has said “long lists of potential party witnesses do not impactits analysis.” Precis
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`Grp., No. 6-20-CV-00303-ADA, 2021 WL 932046,at *7.
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`Asto “distribution” of the TikTok application—a topic 10Tales arguesis relevantto this
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`case (Opp.at 1, 3, 4, 14)—the only Defendant employees identified by either party
`ES:5:
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`a A
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`sto thePo 10Tales misrepresentsPo
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`ee This team is not responsible fori
`Pe Id. Even so, 10Tales does not
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`“identify the relevancy and materiality of the information” that may be provided bythis team,
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`7
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`>
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`.
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`the best position to testify about that technology regardless of whenfj started at the company.
`Experts do not provide fact testumony, but can provide opinion based on testimony.
`10Tales’ reference topo should be ignored, as Defendants did notidentify
`as
`knowledgeable about revenue, profits or costs. Moreover, 10Tales unilaterally canceled
`deposition the night before, and cannot show anyone from Austin is relevant to this case.
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`}
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`=
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`ee
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 9 of 57
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`and which is not located in California or Texas to be useful in this analysis. See Diem LLC v.
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`BigCommerce, Inc., No. 6:17-CV-00186-JRG, 2017 WL 6729907, at *3–4 (E.D. Tex. Dec. 28,
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`2017) (citation omitted).
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`10Tales identifies a single party witness it may call at trial, Mr. Russek, the ‘030 patent
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`inventor, who is located in Pennsylvania. Opp. at 5, 10. Applying the Fifth Circuit’s “100-mile
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`rule,” 10Tales claims W.D. Tex. is more convenient for Mr. Russek given the additional miles
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`necessary to get to N.D. Cal. However, the Federal Circuit has repeatedly warned against this
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`type formulaic application of the 100-mile rule. See, e.g., In re: TracFone Wireless, 2021 WL
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`1546036, at *2–3 (collecting cases). Under a proper analysis of this factor, when traveling from
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`Pennsylvania, Mr. Russek “would only be slightly more inconvenienced by having to travel to
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`California than to Texas.” Id. at *3 (citation omitted). In addition,
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`, who could testify as
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`to the value of the patented technology.
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`.
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`As explained above (§ II.B), the only relevant non-party witnesses identified are located
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`in N.D. Cal. Therefore, to the extent any of those non-party witnesses are willing to attend trial,
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`transfer to N.D. Cal. will be significantly more convenient.
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`In sum, there are (1) at least
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` witnesses that may potentially testify at trial in N.D.
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`Cal. for whom transfer would make testifying significantly more convenient, (2) no witnesses in
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`W.D. Texas, and (3) one potential witness on the east coast, for whom transfer would be only
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`slightly more inconvenient—if at all. Therefore, this factor weighs in favor of transfer.
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`D.
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`Court Congestion
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`The time it takes the court to progress to trial weighs in favor of, or is at worst, neutral to
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`transfer. As stated in Defendants’ opening brief, the Federal Circuit recently determined that
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`time to trial is shorter in N.D. Cal. See In re Apple, 979 F.3d 1343-44 (noting comparable times
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 10 of 57
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`to trial for civil cases and that NDCA has historically had a shorter time to trial for patent cases).
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`Further, a “district court’s decision to give undue priority to the merits of a case over a party’s
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`transfer motion should not be counted against that party in the venue transfer analysis.” Id. at
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`1333. With California opening back up in June, N.D. Cal. will be able to accommodate a jury
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`trial, and any speculation otherwise is what makes “this factor [] the most speculative, and [it]
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`cannot outweigh other factors.” Precis Group, 2021 WL 932046, at *8. Thus, this factor weighs
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`in favor of transfer.
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`E.
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`Local Interest
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`The evidence proves that N.D. Cal. is
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` in the United States, giving it a greater local interest to this case.
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` 10Tales’ only attempt to connect Defendants to Texas is based on a mischaracterization of
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` testimony.
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` testified regarding the Texas office that
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` 10Tales cannot use its own
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`twist on the record to argue otherwise. Unsurprisingly, 10Tales has no local interest or
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`connection whatsoever to W.D. Tex. Thus, the citizens of Waco will need to endure a several-
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`weeks long jury trial for a case that has no effect on its community. Because Defendants’
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`, is in N.D. Cal. and any presence in W.D. Tex. is “general” and
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`“untethered to the lawsuit,” this factor favors transfer. In re Apple, 979 F.3d at 1345 (favoring
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`transfer to where the “accused products were designed [and] developed”).
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`III. CONCLUSION
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`Because each of the transfer factors weighs in favor of, or is neutral to, transfer,
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`Defendants respectfully requests that this case be transferred to N.D. Cal.
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 11 of 57
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`Dated: April 28, 2021
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`By: /s/ Stephen S. Korniczky
`Stephen S. Korniczky (admitted pro hac vice)
`Martin R. Bader (admitted pro hac vice)
`Ericka J. Schulz (admitted pro hac vice)
`James Young Hurt admitted (CA Bar No. 312390)
`Eric K. Gill (admitted pro hac vice)
`Michael J. Hopkins (admitted pro hac vice)
`Krysti Papadopoulos (admitted pro hac vice)
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA. 92130
`T: 858.720.8900
`F: 858.509.3691
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`jhurt@sheppardmullin.com
`egill@sheppardmullin.com
`mhopkins@sheppardmullin.com
`kpapadopoulos@sheppardmullin.com
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`
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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
`F: 469.391.7550
`jmueller@sheppardmullin.com
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`Attorneys for Defendants ByteDance Ltd., ByteDance Inc.,
`TikTok Inc., and TikTok Pte. Ltd.
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 12 of 57
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`FILED UNDER SEAL
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 28, 2021, a true and correct copy of the foregoing
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`DEFENDANTS’ REPLY IN SUPPORT OF ITS MOTION TO TRANSFER UNDER 28 U.S.C.
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`§ 1404 was served on counsel of record in this case by electronic mail.
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`/s/ Stephen S. Korniczky
`Stephen S. Korniczky
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`-11-
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 13 of 57
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`10TALES, INC.,
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`Plaintiff,
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` v.
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`SUPPLEMENTAL DECLARATION OF NICOLA RAGHAVAN
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`I, Nicola Raghavan, do hereby declare and state as follows:
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`1.
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`I am over 18 years of age and competent to make this declaration. I have either
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`personal knowledge of the matters set forth in this declaration or I have learned them through
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`reasonable investigation, and if called upon as a witness, I could and would testify competently to
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`them.
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`2.
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`I am employed as the Head of Human Resources at TikTok Inc. (“TTI”). I have
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`been employed by TTI since March 2020. Unless otherwise indicated, the statements made in this
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`declaration with regard to TTI are based on my personal knowledge, corporate records maintained
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`by TTI in the ordinary course of its business, and/or as a result of consulting with company
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`employees. I also received certain information about TikTok PTE. LTD. (“TTPL”), ByteDance
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`Ltd. (“BDL”) and ByteDance Inc. (“BDI”) in order to confirm the statements made herein about
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`those entities.
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`3.
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`Attached hereto as Exhibit 1 is
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`4.
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`I have been informed that 10Tales, Inc. asserts TikTok has over 60,000 employees.
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`It is unclear to which entities 10Tales, Inc. is referring,
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`5.
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`As of December 24, 2020,
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`6.
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`Attached hereto as Exhibit 2 is
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`I declare under penalty of perjury that to the best of my knowledge the foregoing is true
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`and correct. Executed on April 28, 2021 in Los Angeles, California.
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`.
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`___________________________________
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`Nicola Raghavan
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`EXHIBIT 1
`EXHIBIT 1
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`[FILED UNDER SEAL]
`[FILED UNDER SEAL]
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` EXHIBIT 2
`EXHIBIT 2
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`[FILED UNDER SEAL]
`[FILED UNDER SEAL]
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 18 of 57
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`10TALES, INC.,
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`Plaintiff,
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` v.
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`DECLARATION OF ERICKA J. SCHULZ IN SUPPORT OF DEFENDANTS’ REPLY
`IN SUPPORT OF ITS MOTION TO TRANSFER UNDER 28 U.S.C. § 1404
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`I, Ericka J. Schulz, declare as follows:
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`1.
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`I am an attorney licensed to practice law in the State of California and a Partner
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`with the law firm Sheppard Mullin Richter & Hampton LLP located at 12275 El Camino Real,
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`Suite 100, San Diego, California 92130. I am counsel for Defendants TikTok Inc., TikTok PTE.
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`Ltd., ByteDance Ltd., and ByteDance Inc. (“Defendants”) in the above-captioned matter. I have
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`personal knowledge of the matters set forth below, and if called and sworn as a witness, I could
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`and would testify competently to the facts set forth herein.
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`2.
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`Attached hereto as Exhibit 1 is
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`3.
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`Attached hereto as Exhibit 2 is
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`4.
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`5.
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`Attached hereto as Exhibit 3 is
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`Attached hereto as Exhibit 4 is
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`6.
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`Attached hereto as Exhibit 5 is a true and correct copy of the Assignment of U.S.
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`Patent No. 8,856,030 - Reel 036119-Frame -391, as produced by 10Tales, Inc. (“10Tales”) on
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`February 25, 2021 and which 10Tales identified with Bates Numbers 10Tales000519-525.
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`7.
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`Attached hereto as Exhibit 6 is a true and correct copy of 10Tales’ Foreign
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`Registration Statement filed with the California Secretary of State on October 15, 2015 (“CA
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`Foreign Registration Statement.”) This document is publicly available from the California
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`Secretary of State by navigating to the “Business Search” page
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`(https://businesssearch.sos.ca.gov/) and searching for 10Tales. This document lists the “Street
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`Address of Principal Executive Office” and the “Street Address of Principal Office in California,
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`if any” as “68 Willow Road, Menlo Park, CA 94025.”
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`8.
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`Attached hereto as Exhibit 7 is a true and correct copy of 10Tales’ Statement of
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`Information filed with the California Secretary of State on October 26, 2015. This document is
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`publicly available from the California Secretary of State by navigating to the “Business Search”
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`page (https://businesssearch.sos.ca.gov/) and searching for 10Tales. Together with the CA
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`Foreign Registration statement, these are the only two documents available for 10Tales, Inc. on
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`the California Secretary of State website. This document lists the “Street Address of Principal
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`Executive Office” and the “Street Address of Principal Office in California, if any” as “68
`
`Willow Road Menlo Park CA 94025.”
`
`9.
`
`Attached hereto as Exhibit 8 is a true and correct copy of an Entity Report for
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`10Tales issued by the Commonwealth of Pennsylvania Bureau of Corporations and Charitable
`
`Organizations (“Pennsylvania Bureau”) on November 5, 2020 indicating that the only publicly
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`available document 10Tales has filed with the Pennsylvania Bureau is a “Creation Filing” dated
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`October 5, 2015. Versions of this report are publicly available and can be ordered from the
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`Pennsylvania Department of State website by navigating to the “Search for Business Entity”
`
`page (https://www.corporations.pa.gov/search/corpsearch) and searching for 10Tales.
`
`10.
`
`Attached hereto as Exhibit 9 is a true and correct copy of 10Tales’ Foreign
`
`Registration Statement filed with the Pennsylvania Bureau on October 5, 2015. This is the only
`
`publicly available document 10Tales has filed with the Pennsylvania Bureau. This document is
`
`publicly available from the Pennsylvania Department of State website by navigating to the
`
`“Search for Business Entity” page (https://www.corporations.pa.gov/search/corpsearch) and
`
`searching for 10Tales. This document lists the “street and mailing address of the association’s
`
`principal office” as “68 Willow Road, Menlo Park, CA 94025.”
`
`11.
`
`Attached hereto as Exhibit 10 is a true and correct copy of 10Tales’ Notice of
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`Exempt Offering of Securities as filed on October 13, 2015 (“October 13 Form D”). This
`
`document lists the “Principal Place of Business and Contact Information” for 10Tales, Inc. as 68
`
`Willow Road, Menlo Park, CA 94025. A copy of this Offering Notice is publicly available by
`
`searching for “10Tales” at https://www.sec.gov/edgar/search/. This document lists the “street and
`
`mailing address of the association’s principal office” as “68 Willow Road, Menlo Park, CA
`
`94025.”
`
`-3-
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 21 of 57
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`
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`12.
`
`Attached hereto as Exhibit 11 is a true and correct copy of 10Tales’ Notice of
`
`Exempt Offering of Securities as filed on October 29, 2015 (“October 29 Form D”) with the
`
`Securities and Exchange Commission (“SEC”). This document lists the “Principal Place of
`
`Business and Contact Information” for 10Tales, Inc. as 68 Willow Road, Menlo Park, CA 94025.
`
`A copy of this Offering Notice is publicly available by searching for “10Tales” at
`
`https://www.sec.gov/edgar/search/. This document lists the “street and mailing address of the
`
`association’s principal office” as “68 Willow Road, Menlo Park, CA 94025.” Other than the
`
`October 15 Form D, and the October 29 Form D, no other documents appear when searching for
`
`10Tales at the SEC website.
`
`13.
`
`Attached hereto as Exhibit 12 is
`
`14.
`
`Attached hereto as Exhibit 13 is
`
`.
`
`
`
`
`
`.
`
`I declare under penalty of perjury under the laws of the United Sates that the foregoing is
`
`true and correct. Executed on April 28, 2021, at San Diego, California.
`
`/s/ Ericka J. Schulz
`Ericka J. Schulz
`
`-4-
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 22 of 57
`Case 6:20-cv-00810-ADA Document83 Filed 05/13/21 Page 22 of 57
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`
`
`
`
` EXHIBIT 1
`EXHIBIT 1
`
` [FILED UNDER SEAL]
`[FILED UNDER SEAL]
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 23 of 57
`Case 6:20-cv-00810-ADA Document83 Filed 05/13/21 Page 23 of 57
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`EXHIBIT 2
`EXHIBIT 2
`
`[FILED UNDER SEAL]
`[FILED UNDER SEAL]
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 24 of 57
`Case 6:20-cv-00810-ADA Document83 Filed 05/13/21 Page 24 of 57
`
`EXHIBIT 3
`EXHIBIT 3
`
`[FILED UNDER SEAL]
`[FILED UNDER SEAL]
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 25 of 57
`Case 6:20-cv-00810-ADA Document83 Filed 05/13/21 Page 25 of 57
`
`EXHIBIT (cid:23)
`EXHIBIT 4
`
`[FILED UNDER SEAL]
`[FILED UNDER SEAL]
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 26 of 57
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 26 of 57
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`EXHIBIT 5
`EXHIBITS
`
`

`

`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 27 of 57
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`
`
`
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`
`
`Total Attachments: 5
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`
`
`Electronic Version v1.1
`
`Stylesheet Version v1.2
`
`
`
`EPAS ID: PAT3444584
`
`
`SUBMISSION TYPE:
`
`
`NEW ASSIGNMENT
`
`
`NATURE OF CONVEYANCE:
`
`ASSIGNMENT
`
`
`Execution Date
`
`05/29/2015
`
`
`
`CONVEYING PARTY DATA
`
`
`
`
`
`RECEIVING PARTY DATA
`
`
`
`
`Street Address:
`
`
`
`68 WILLOW ROAD
`
`City:
`
`State/Country:
`
`
`Postal Code:
`
`
`MENLO PARK
`
`CALIFORNIA
`
`94025
`
`
`
`
`PROPERTY NUMBERS Total: 5
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`
`
`
`Application Number:
`
`
`Application Number:
`
`
`Patent Number:
`
`
`Patent Number:
`
`
`PCT Number:
`
`60460998
`
`14506822
`
`8478645
`
`8856030
`
`US2004010772
`
`
`CORRESPONDENCE DATA
`
`
`
`(412)281-0717
`Fax Number:
`Correspondence will be sent to the e-mail addressfirst; if that is unsuccessful, it will be sent
`
`
`
`
`
`
`
`
`
`
`using a fax number, if provided; if that is unsuccessful, it will be sent via US Mail.
`
`
`
`
`
`
`
`
`Phone:
`4124545000
`Email:
`docketingpgh@pepperlaw.com
`
`
`
`Correspondent Name:
`PEPPER HAMILTON LLP
`
`
`
`
`
`Address Line 1:
`500 GRANT STREET
`
`
`
`Address Line 2:
`SUITE 5000
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`
`
`
`AddressLine 4:
`PITTSBURGH, PENNSYLVANIA 15219-2507
`
`
`
`
`
`ATTORNEY DOCKET NUMBER:
`
`127072.2
`
`
`NAME OF SUBMITTER:
`
`
`JOSEPH T. HELMSEN
`
`SIGNATURE:
`
`
`DATE SIGNED:
`
`
`
`
`
`/Joseph T. Helmsen/
`
`
`07/17/2015
`
`503397959
`
`PATENT
`
`
`
`REEL: 036119 FRAME: 0391
`10Tales0000519
`
`
`
`

`

`source=Assignment_executed_SevenEchoTO10Tales#pages5.tif
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`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 28 of 57
`source=Assignment_executedS$
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`source=Assignment_executed_SevenEchoTO10Tales#pagez.tif
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`source=Assignment_executed_SevenEchoTO10Tales#page3.tif
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`
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`source=Assignment_executed_SevenEchoTO10Tales#page4.tif
`
`
`
`
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`
`
`PATENT
`
`
`
`REEL: 036119 FRAME: 0392
`10Tales0000520
`
`

`

`
`
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 29 of 57
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 29 of 57
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`
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`PATENT ASSIGNMENT AGREEMENT
`
`
`
`This PATENT ASSIGNMENT Agreement (this “Assignmenf’) is by and
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`
`
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`
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`between SEVENECHO,LLC, a Pennsylvania limited liability company, (the “Assigner’”) having
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`
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`its principal office at 262 East Main Street, Norristown, PA 19401, USA and IOTALES,INC., a
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`Delaware corporation (the “Assignee”) having its principal office at 68 Willow Road, Menlo
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`
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`Park, CA 94025.
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`
`
`
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`WHEREAS, Assignor and Assignee have entered that certain Contribution
`
`
`
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`
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`Agreement dated May 29, 2015 (the “Contribution Agreement’) pursuant to which Assignor
`
`
`
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`
`
`
`
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`
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`conveyed to Assignee the Assignor’s rights, title and interest in and to the Contributed Assets as
`
`
`
`
`
`
`
`
`
`
`defined in the Contribution Agreement,
`including, without
`limitation,
`the patents and
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`
`
`
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`
`
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`applications set forth on Schedule A hereto, including any and all substitutions, divisionals,
`
`
`
`
`
`
`
`
`
`
`
`continuations,
`continuations-in-part,
`provisional
`applications,
`reissues,
`reexaminations,
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`
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`
`
`
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`extensions, supplementary protection certificates and the like of any such patents or patent
`
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`applications, any and all counterparts of any of the foregoing in any country of the word and any
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`and all patents issued from any of the foregoing (“Patent Properties”); and
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`
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`WHEREAS,Assignor and Assignee desire to effectuate such assignment of the
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`
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`
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`Patent Properties pursuant to the terms and conditions set forth herein.
`
`
`
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`
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`the receipt and
`NOW, THEREFORE, for good and valuable consideration,
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`
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`
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`sufficiency of which are hereby acknowledged, the parties represent, covenant and agree as
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`
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`
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`follows:
`
`1.
`Defined Terms. Capitalized terms used but not otherwise defined herein
`
`
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`
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`shall have the meanings given to them in the Contribution Agreement.
`
`
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`
`
`2.
`Assignment. Assignor does hereby irrevocably assign, transfer, convey,
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`
`
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`
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`grant and set over to Assignee, and Assignee agrees to accept any such assignment, transfer,
`
`
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`conveyance, grant and set over of, as of May 29, 2015 all of Assignor’s worldwide and entire
`
`
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`
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`right, title and interest in and to the Patent Properties and any andall intellectual property rights
`
`
`
`
`
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`
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`inherent in the Patent Properties and appurtenant thereto. Any assignmentof rights shall be held
`
`
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`and enjoyed by Assignee, its successors and assigns from and after the date of such assignment
`
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`as fully and entirely as the same would have been held and enjoyed by Assignor had such
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`assignment not been made.
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`3.
`Acceptance of Assignment. Assignee hereby accepts the rights and
`
`
`
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`properties hereby assigned and transferred to it herein.
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`4.
`Right to Sue for Past Infringement. Assignor also assigns to Assignee
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`all of Assignor’s right, title, interest and standing to collect, assert, or enforce any claim,right,
`
`
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`title or interest of any kind under any and all of the Patent Properties,
`including, without
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`limitation, the right (i) to sue for all past, present and future infringements, misappropriations or
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`other violations of any rights relating thereto; (ii) to settle, defend, compromise and retain
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`proceeds from any actions, suits, or proceedings relating to the transferred and assigned rights,
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`title, interest, and benefits; and (411) to do all other such acts and things in relation thereto as
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`Assignee, in its sole discretion, deems advisable.
`
`
`
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`
`
`
`PATENT
`
`
`
`REEL: 036119 FRAME: 0393
`10Tales0000521
`
`

`

`
`
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 30 of 57
`Case 6:20-cv-00810-ADA Document 83 Filed 05/13/21 Page 30 of 57
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`5.
`Cooperation. Assignor agrees to execute, acknowledge and deliver, or
`
`
`
`
`cause to be executed, acknowledged and delivered, such further instruments and documents and
`
`
`
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`to perform such further acts as may be reasonably requested by Assignee to effectuate more fully
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`
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`
`
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`the transactions contemplated by this Assignment.
`
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`
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`6.
`Entire Agreement. This Assignment, together with the Contribution
`
`
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`
`
`
`Agreement, contains the entire agreement of the parties with respect to the subject matter of this
`
`
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`
`
`Assignment. No prior agreement or understanding pertaining to any such matter shall be
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`effective. This Assignment may only be modified in a written instrument executed by the
`
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`parties.
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`
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`
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`Binding Assignment. This Assignment shall be binding upon and inure
`7.
`
`
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`
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`to the benefit of each of the parties hereto, their successors and assigns.
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`
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`8.
`Governing Law. This Assignment shall be governed by and construed
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`
`
`under the laws of the State of Delaware and the federal laws of the United States of America
`
`
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`applicable therein, excluding any conflicts of laws rule o