Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC., (D/B/A FLYP),
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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` CIVIL ACTION NO. 6:22-cv-00031-ADA
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`JURY TRIAL DEMANDED
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`REPLY IN SUPPORT OF DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO
`STAY PROCEEDINGS PENDING MANDAMUS REVIEW
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 2 of 8
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`Staying this case is appropriate, regardless of the test employed. Flyp has no basis to insist,
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`as it does, that the factors set forth in Kirsch Research and Development LLC v. IKO Industries,
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`No. 6:20-cv-00317-ADA, 2021 WL 4555610 (W.D. Tex. Oct. 5, 2021), are cabined solely to
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`motions to stay pending inter partes review. They are not, as this Court has characterized the
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`Kirsch factors as “general stay factors” and has used those factors to evaluate stay requests outside
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`the IPR context. See Flygrip, Inc. v. Amazon.com, Inc., No. 6:21-cv-01081-ADA, 2022 WL
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`2346624 (W.D. Tex. June 28, 2022), mandamus granted, order vacated sub nom., In re
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`Amazon.com, Inc., No. 2022-157, 2022 WL 17688072 (Fed. Cir. Dec. 15, 2022). Flyp fails to
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`address the Kirsch factors, likely because Flyp cannot dispute that a stay (a) will assure that the
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`eventual trial court in this matter will preside over pre-trial disputes and apply its governing rules
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`and requirements, (b) will conserve party and judicial resources, and (c) will not prejudice or limit
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`Flyp’s ability to recover monetary damages. Flyp’s own chosen test also favors stay given the
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`current circumstances of this case. Google’s motion for a stay should be granted.
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`I.
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`A STAY IS WARRANTED UNDER THE TEST PROVIDED BY KIRSCH
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`As this Court recently recognized in another case, Motion Offense, LLC. v. Google LLC,
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`No. 6:21-cv-00514-ADA, ECF No. 77 (W.D. Tex. Sept. 15, 2022), the Court’s inherent power to
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`control disposition of its cases permits it to stay a case pending resolution of a petition for writ of
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`mandamus as to a transfer decision. In that case, the Court stayed a litigation based on a party’s
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`single sentence request in a Joint Case Management Statement. Id. at ECF Nos. 76 and 77. Flyp’s
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`form-over-substance complaint that Google applied the Kirsch test, rather than the test from United
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`States v. McKenzie, 697 F.2d 1225, 1226 (5th Cir. 1983), falls flat.
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`Applying the Kirsch factors is appropriate. The mere fact that those factors have been
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`applied in one circumstance (e.g., inter partes review) is not, as Flyp contends, end-all proof that
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 3 of 8
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`those factors are somehow inapplicable to other circumstances. Resp. at 1, 3, and 8. Instead, this
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`Court recently used the Kirsch factors to determine whether to stay a case pending third party
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`declaratory judgment actions regarding the asserted patents, expressly characterizing those factors
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`as “general stay factors[.]” Flygrip, Inc., 2022 WL 2346624, at *7. The Court has also used the
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`Kirsch factors to evaluate motions to stay pending ex parte reexamination. See TC Tech. LLC v.
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`T-Mobile USA, Inc., No. 6-20-CV-00899-ADA, 2021 WL 8083373 (W.D. Tex. Dec. 7, 2021).
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`Flyp’s refusal to address the Kirsch factors, and its blind reliance on McKenzie, is therefore
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`misplaced.1
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`II.
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`GOOGLE’S OPENING BRIEF WAIVED NO ARGUMENTS
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`Notwithstanding the above, Flyp misinterprets LBT II, LLC v. Uber Techs., Inc., No. 6:21-
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`cv-01210-ADA, 2022 WL 2329321, at *6 (W.D. Tex. June 28, 2022) (citing Flores v. AT&T
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`Corp., No. EP-17-CV-00318-DB, 2018 WL 6588586, at *9 (W.D. Tex. Nov. 8, 2018)) for the
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`assertion that Google has somehow waived any ability to make arguments related to the factors
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`provided under McKenzie. LBT II is inapposite. LBT II found waiver because the movant “for the
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`very first time, argue[d] for dismissal of [Plaintiff’s] post-suit induced infringement claims” after
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`the movant only requested dismissal of pre-suit induced infringement claims in its original motion.
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`LBT II, 2022 WL 2329321, at *6. Here, by contrast, Google’s request and basis for a stay was
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`clearly stated in its opening motion and has not changed. Flyp does not cite any case law supporting
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`the notion that Google somehow forfeited its right to make arguments in support of the
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`fundamental request and issue set forth in the opening motion by not accurately guessing at and
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`pre-addressing the arguments that Flyp ultimately included in its response brief. The Court may
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`1 WSOU Invs. LLC v. ZTE Corp., No. 6:20-cv-00487-ADA, 2022 WL 479131, at *2 (W.D. Tex.
`Feb. 16, 2022), cited by Flyp, Resp. at 7, involved materially different circumstances than those
`present here. In WSOU, at the time of the Court’s order, the case had been consolidated with six
`others, which played a key role in the Court’s stay analysis. In contrast, this case proceeds alone.
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 4 of 8
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`review any issues and arguments in a reply brief that are responsive to arguments made in an
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`opposition. See Flores, at *9 (declining to find waiver when reply “raised [issues] for the first
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`time”).
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`III. GOOGLE’S MOTION TO STAY SHOULD BE GRANTED EVEN UNDER
`FLYP’S ALTERNATE TEST
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`The facts set forth in Google’s opening brief demonstrate that a stay is warranted not only
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`using the Kirsch factors, but also using the McKenzie factors relied on by Flyp.
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`A.
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`Google Has Made a Showing of Likelihood of Success on the Merits
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`Flyp argues in circles by stating that a sufficient likelihood of success on the merits cannot
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`be found when a trial court has issued an opinion regarding transfer. Resp. at 4. If the Court adopted
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`such a rule, it effectively would turn this factor into an unrebuttable presumption that mandamus
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`petitions predicated upon transfer denials never are likely to succeed on the merits. But, as
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`demonstrated by this Court’s grant of a stay pending a mandamus petition in Motion Offense, this
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`factor, if applicable, can be satisfied by a transfer ruling. No. 6:21-cv-00514-ADA, ECF No. 77.
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`And, as Google noted in its motion, here the Court found two of the four factors favored transfer,
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`making the transfer decision a close call. Mot. at 2.
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`Further, recent statistical data shows that the Federal Circuit frequently grants mandamus
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`petitions regarding transfer. For example, from 2008 through 2021, thirty-nine out of one-hundred-
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`and-thirteen mandamus petitions challenging Section 1404(a) denials of transfer have been granted
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`by the Federal Circuit. Anderson, et al., Extraordinary Writ or Ordinary Remedy? Mandamus at
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`the Federal Circuit, 100 Wash. U. L. Rev. 327, 362, Fig. 6 (2022) (Ex. 2). Given the Federal
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`Circuit’s established scrutinization of transfer decisions, and given the specific arguments and
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`issues set forth in Google’s filed Petition for Writ of Mandamus (Ex. 3), Google has made a
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`sufficient showing of likely success to warrant a stay.
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 5 of 8
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`B.
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`Google Will Suffer Irreparable Injury if the Stay Is Not Granted
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`Google will suffer irreparable injury without a stay. Google filed the mandamus petition to
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`ensure that the correct trial court oversees this matter and makes the discovery and other decisions
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`that will inform and define the course of these proceedings. Discovery is now accelerating, and
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`the plaintiff has stated that it plans to submit multiple discovery disputes to the Court for resolution.
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`These properly should be addressed by the court that ultimately will try this case, which cannot be
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`assured in the absence of a stay. Moreover, because the two districts’ local rules and standing
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`orders impose different obligations on the parties, if a stay is not issued, the parties and the Court
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`may be forced to perform burdensome litigation tasks (e.g., prepare and serve final contentions)
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`that may ultimately prove unnecessary or inappropriate. Mot. at 4–5. When “a substantial amount
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`of discovery—including depositions” remains, as it does here, that fact weighs in favor of granting
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`a stay. Mot. at 4; Bell Semiconductor, LLC v. NXP Semiconductors, N.V., No. 1:20-cv-611-LY,
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`2022 WL 1447948 (W.D. Tex. Feb. 7, 2022).2
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`C.
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`Granting the Stay Would Not Substantially Harm Flyp
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`A stay, which is likely to be short in duration given that the briefing is already complete as
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`to Google’s mandamus petition, would not harm Flyp. Flyp’s generic desire to enforce its asserted
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`patent rights is a “factor . . . present in every case in which a patentee resists a stay” and is “not
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`sufficient, standing alone, to defeat a stay motion.” CyWee Grp. Ltd. v. Samsung Elecs. Co., No.
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`2:17-cv-00140-WCB-RSP, 2019 WL 11023976, at *3 (E.D. Tex. Feb. 14, 2019) (Bryson, J.); see
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`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No. 2:19-cv-00259-JRG-RSP, 2020 WL 1433960,
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`at *4 (E.D. Tex. Mar. 24, 2020) (same). Flyp recites various discovery tasks being performed to
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`2 Flyp attempts to differentiate Bell on the basis that it concerned a motion to stay pending inter
`partes review. But, as explained in Section I, Flyp ignores this Court’s past use of the Kirsch
`factors outside of the IPR context.
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 6 of 8
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`demonstrate their desire to resolve this case. Resp. at 6. That activity only shows that that discovery
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`continues to accelerate, which favors staying the case so that it can be assured that the correct trial
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`court will oversee any disputes. Flyp’s reliance upon WSOU, Resp. at 7, is misplaced because that
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`case involved six cases that had been consolidated for discovery purposes, a circumstance that is
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`not present here. WSOU, 2022 WL 479131, at *2.
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`D.
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`Granting the Stay Would Serve the Public Interest
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`A stay would serve the public interest because it would assure that the trial court that
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`ultimately will preside over this case is able to apply its own rules and requirements and resolve
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`disputes in accord with its prevailing standards. A stay would also benefit the public by preventing
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`potentially unnecessary or inefficient uses of judicial and party resources, for example, on
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`discovery disputes heard by the wrong trial court. Mot. at 4–5. As Flyp notes, the public interest
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`favors inexpensive actions and proceedings. Resp. at 7 (citing Uniloc, 2020 WL 1433960, at *2–
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`3).3
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`IV. CONCLUSION
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`Google has more than demonstrated that a stay is warranted under two separate tests used
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`to determine the appropriateness of a stay. All proceedings should thus be stayed pending the
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`Mandamus Petition’s resolution.
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`3 Flyp’s reliance on the Kraft case is misplaced. Resp. at 7. In Kraft, there were several pending
`motions and “loose threads.” Kraft Foods Grp. Brands LLC v. TC Heartland LLC, 232 F. Supp.
`3d 628, 630–31 (D. Del. Jan. 12, 2017). Here, motions might be filed in the near future, but none
`were pending when this motion was filed.
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 7 of 8
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`DATED: January 20, 2023
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`Respectfully Submitted,
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`/s/ Robert W. Unikel
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Pro Hac Vice)
`johncotiguala@paulhastings.com
`Daniel J. Blake (Pro Hac Vice)
`danielblake@paulhastings.com
`Grayson S. Cornwell (Pro Hac Vice)
`graysoncornwell@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`
`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
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`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`David M. Fox (Pro Hac Vice)
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Paige Arnette Amstutz
`State Bar No.: 00796136
`pamstutz@scottdoug.com
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`Case 6:22-cv-00031-ADA Document 90 Filed 01/20/23 Page 8 of 8
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`SCOTT, DOUGLASS & MCCONNICO, LLP
`303 Colorado Street, Suite 2400
`Austin, TX 78701
`Telephone: (512) 495-6300
`Facsimile: (512) 495-6399
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`Attorneys for Defendant Google LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 20th day of January, 2023, a true and correct copy of the
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`foregoing document was filed electronically with the Clerk of Court using the CM/ECF system.
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`As of this date, all counsel of record have consented to electronic service and are being served
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`with a copy of this document through the Court’s CM/ECF system.
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`/s/ Robert W. Unikel
`Robert W. Unikel
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