UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

SITO MOBILE R&D IP, LLC and SITO 

MOBILE, LTD., 

Plaintiffs, 

 v. 

HULU, LLC, 

Defendant. 

Case No. 6:20-cv-00472-ADA 

JURY TRIAL DEMANDED 

SITO’S OPPOSITION TO HULU’S OPPOSED MOTION TO STAY 

PENDING RESOLUTION OF ITS MOTION TO TRANSFER VENUE 

TO THE CENTRAL DISTRICT OF CALIFORNIA, OR, IN THE ALTERNATIVE, 

TO AMEND THE SCHEDULING ORDER 

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I. Introduction. 

 Hulu cannot meet its burden to show that a stay is necessary in this case. 

Instead, Hulu tries to paint SITO in a bad light by accusing SITO of engaging in delay 

tactics. But those allegations are simply not true. And Hulu ignores the many months it 

waited before filing its transfer motion. Hulu also complains about the venue discovery 

SITO seeks to develop the evidentiary record and challenge the facts in Hulu’s 

supporting declaration. But it fails to mention to the Court that it also seeks discovery 

from SITO. Finally, Hulu points to the FloSports and Blue Scout cases to support its 

request for a stay or an amended schedule. But FloSports did not move to transfer 

venue and has not asked to stay its case. And the Blue Scout case is at least five months 

behind the Hulu and FloSports litigations. 

Hulu’s motion for a stay is a thinly-veiled attempt to freeze the progress the 

parties have made in this case to date under the presumptuous notion that this case will 

ultimately be transferred to the Central District of California. Under Hulu’s rationale, a 

stay would be granted any time a defendant filed a transfer motion. In any event, 

venue-related discovery will be completed within the next couple of weeks and Hulu’s 

transfer motion will be fully briefed by December 11, 2020. And the Markman hearing is 

not until March 5, 2021. The parties should follow the case schedule and venue 

discovery and briefing dates the parties agreed to until a decision is rendered on the 

pending motion to transfer. As discussed below, Hulu has not met its burden of 

establishing that a stay is necessary and, therefore, the stay motion should be denied. 

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II. Factual background. 

SITO filed its complaint against Hulu on June 2, 2020 (D.I. 1), and after service, 

Hulu’s answer was due on June 29, 2020. Hulu, however, asked for a 45-day extension 

of time until August 13, 2020 to answer the complaint or otherwise respond. SITO 

agreed to this request and filed an unopposed motion for an extension. 

Hulu repeatedly mentions that SITO moved the due date of its preliminary 

infringement contentions and the case management conference. Hulu knows that the 

CMC was moved not for SITO’s benefit, but rather to accommodate co-defendant 

FloSports. SITO acknowledges that it obtained a two-week extension to serve its 

infringement contentions. But this was done to give SITO more time to streamline the 

case by limiting the number of asserted claims, which SITO did. Taking an additional 

two weeks to winnow down the number of claims in the case benefited Hulu and 

FloSports, and SITO did not do that to cause any delay. Hulu’s assertion to the contrary 

is nonsense. 

But after Hulu answered the complaint on August 13th, and SITO replied to 

Hulu’s counterclaims, Hulu waited almost two months before filing its motion to 

transfer venue on October 2, 2020. This was the last day under the Court’s schedule for 

Hulu to file such a motion.1

1 Given Hulu’s purported concern over efficiently litigating this case in a proper venue 

without any delay, Hulu’s decision to wait until the last possible day to file its transfer 

motion undermines its supposed concern.

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Thereafter, on October 6th, within two business days of Hulu’s motion to transfer 

being filed, SITO approached Hulu’s counsel to seek an extension of time to respond. 

The next day, in a follow-up email, SITO explained that the extension it sought would 

enable it to “fully consider the information Hulu has put forth in its motion and gather 

evidence to support our response.” After SITO explained its reasoning, Hulu agreed to 

the requested extension. 

Accordingly, instead of seeking venue discovery as a knee-jerk reaction, SITO 

first tried to gather relevant evidence on its own about the third parties identified in 

Hulu’s motion to transfer and other facts relevant to Hulu’s business activities in Texas. 

Once it became clear, however, that Hulu was in possession of relevant evidence, SITO 

promptly notified Hulu that it needed discovery and sought assistance from this Court 

when Hulu refused to agree. 

The procedural chronology of this case undermines Hulu’s attempt to cast SITO 

in a bad light. Indeed, after Hulu asked for a 45-day extension to answer the complaint 

and then waited almost two months to file its present motion to transfer after it served 

its answer, Hulu’s accusations about SITO supposedly trying to delay this case are both 

disingenuous and hypocritical. 

Further, Hulu claims that SITO has served “wide-ranging” venue-related 

discovery that includes “two deposition notices, nine interrogatories, and seventeen 

requests for documents.” SITO’s discovery, however, does relate to venue, and seeks 

facts about Hulu’s business activities in Texas, including within this district and 

division, the identification of Hulu’s servers and infrastructure that Hulu uses to stream 

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content to users within Texas and this district and division, and its content partners and 

advertising partners located in Texas and this district/division. But what Hulu doesn’t 

tell the Court when it again tries to cast SITO in a bad light, is that it served just as 

much, if not more discovery on SITO. Like SITO, Hulu served two deposition notices, 

but Hulu served seven interrogatories, nine document requests, and thirty-seven 

requests for admission. 

But despite Hulu’s griping about venue discovery, that discovery will be 

complete in just a couple of weeks, and the parties briefing on Hulu’s transfer motion 

will be complete by December 11, 2020, more than three months before the March 5, 

2021 Markman hearing date. 

SITO regrets having to get into this level of detail with the Court about the 

procedural posture of this case and venue discovery, but it feels compelled to respond 

to the various assertions and accusations that Hulu casts about in its brief. At bottom, 

none of Hulu’s meritless contentions warrant staying this case. 

And that is true with SITO’s case against Blue Scout. SITO’s efforts to license or 

otherwise monetize its patent portfolio are ongoing. Part of this effort involves litigation 

against other infringers in the Western District of Texas, including Blue Scout Media. 

The suit against Blue Scout is not frivolous, and Hulu does not contend otherwise. 

Instead, Hulu calls the Blue Scout case a “ploy,” but then at the same time argues that 

the Markman hearing dates in the cases against it and FloSports should be delayed by 

four months because of the Blue Scout case. In any event, that SITO recently filed suit 

against Blue Scout causes no prejudice to Hulu. 

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III. Legal standard. 

“The proponent of a stay bears the burden of establishing its need.” YETI Coolers, 

LLC v. Home Depot U.S.A., Inc., No. 1:17-CV-342-RP, 2018 WL 2122868, at *1 (W.D. Tex. 

Jan. 8, 2018). In determining whether a stay is proper, district courts consider three 

factors: (1) the potential prejudice to the non-moving party, (2) the hardship and 

inequity to the moving party if the action is not stayed, and (3) judicial resources. Id. In 

exercising its discretion, the Court should be “guided by the policies of justice and 

efficiency.” Id. And “[t]hough the Court’s discretion is undeniable, it is not unlimited.” 

Humanscale Corp. v. CompX Int’l Inc., No. CIV.A. 3:09CV86, 2009 WL 1444312, at *2 (E.D. 

Va. May 21, 2009). The movant must “make out a clear case of hardship or inequity in 

being required to go forward, if there is even a fair possibility that the stay for which he 

prays will work damage to someone else.” Id. (quoting Landis v. N. Am. Co., 299 U.S. 248, 

255 (1936) (emphasis added)). 

As discussed below, all three factors weigh against a stay. 

IV. Argument. 

A. SITO will be unduly prejudiced if this case were stayed or the case 

schedule were amended. 

Hulu’s argument that a stay pending resolution of its motion to transfer will not 

prejudice SITO is plainly wrong. 

Currently both the Hulu and FloSports litigations are on the same schedule. 

Hulu seeks a stay of the case against it; it has no standing to move to stay the FloSports 

case, and no joint motion has been filed. Moving the FloSports case forward, but staying 

the Hulu case leads to exactly the same result that Hulu claims it is seeking to avoid: 

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reducing judicial efficiency and engaging in duplicative litigation, especially as it relates 

to claim construction. In other words, staying this case would lead to this Court having 

to conduct a Markman hearing against FloSports and Hulu separately, thereby 

significantly diminishing the judicial efficiency from having these two cases proceed on 

a coordinated schedule. 

So Hulu says the Court should simply amend the case schedules to align them 

with the case against Blue Scout and reset the Markman hearing to a date in July, 2021. 

The coordinated schedules against Hulu and FloSports should not be pushed back 

simply because SITO filed another suit against Blue Scout five months after both Hulu 

and FloSports were sued. Under Hulu’s argument, if SITO were to file another case in 

the next couple of months, all the case schedules would need to be amended and 

pushed back again.2

Indeed, staying this case would work to Hulu’s benefit, but to the detriment and 

prejudice of SITO. A stay will provide Hulu with uninterrupted time to prepare and file 

additional petitions for inter partes review, but delay progress that can be made in this 

case. Hulu has already filed one CBM petition and one IPR petition. If this case were 

stayed, then SITO would lose the opportunity to argue for a discretionary denial of 

Hulu’s currently pending CBM and IPR petitions. SITO would not be able to point to 

2 Although Hulu is purportedly concerned about litigating this case in a timely manner 

and avoiding contradictory claim constructions, it is Hulu that is attempting to move 

this case to a venue that is slower than this Court and where the Court in Los Angeles 

would have its own claim construction ruling. This tactic reveals that Hulu’s concerns 

about judicial efficiency and avoiding duplicative litigation are ultimately feigned. 

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the case schedule here and the progress the parties make in the case to show that the 

CBM and IPR are unnecessarily duplicative and wasteful. To the contrary, Hulu could 

argue that a stay of this case weighs in favor of granting its petitions, and any 

additional petitions it may file. 

Lastly, SITO’s pending bankruptcy proceedings do not justify staying the case 

because there is simply no issue concerning SITO’s ownership of the asserted patents. 

Hulu relies entirely on unsupported speculation to suggest that the case should be 

stayed due to SITO’s recent filing. But the bankruptcy proceedings are merely a 

restructuring of debt, not a liquidation, and they have no bearing on the ownership of 

the asserted patents. In fact, SITO’s patent portfolio is among its most valuable assets, 

and therefore, staying this case would prejudice SITO’s opportunity to pursue its 

infringement claims and enforce its valuable patent assets in an expeditious manner. 

This factor, therefore, weighs heavily against the grant of a stay. 

B. Hulu has not identified any hardship or inequity that would result if 

this case is not stayed. 

Hulu argues that it will be disadvantaged during the claim construction process 

by having to also respond to venue-related discovery. D.I. 30 at 8-9. But that argument 

is weak at best, and the facts do not support it. 

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Hulu is a large sophisticated company that is represented by well-known and 

competent counsel. There is no reason why Hulu cannot engage in venue discovery, 

which is required by a motion of Hulu’s own making, and engage in the claim 

construction process that it also agreed to when this Court ordered the case 

schedule. In fact, as mentioned above, Hulu fails to mention to the Court that it also 

served venue-related discovery requests on SITO. This hypocrisy is common in 

Hulu’s brief. In any event, both parties are positioned in the same way—gathering 

discovery and developing an evidentiary record relating to a venue motion Hulu 

brought before the Court, while engaging in the claim construction process. 

Accordingly, Hulu suffers no hardship or inequity here if the Court does not grant a 

stay. 

Indeed, Hulu was served with the complaint on or about June 3, 2020 and could 

have brought its transfer motion months ago during the summer or at least when Hulu 

filed its answer on August 13th or shortly thereafter, instead of waiting until October 

2nd. Hulu states that the Federal Circuit has emphasized the importance of addressing 

motions to transfer at the outset of litigation (Hulu Br. at 8), but then Hulu fails to take 

responsibility for its own inaction after being sued in June and not filing its venue 

motion until the last possible day under the Court’s case schedule. Any supposed 

hardship or inequity that results from the timing of Hulu’s motion to transfer is the 

result of its own delay. 

Further, even if the Court were to grant Hulu’s motion to transfer, the 

substantive progress the parties will have made in this case will not be for naught. 

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Whatever the parties can accomplish here will carry over to the Central District of 

California. Accordingly, the absence of any hardship and inequity to Hulu favors 

denying Hulu’s request for a stay of this case. 

C. A stay will not conserve judicial resources. 

In an effort to create an argument for conservation of judicial resources, Hulu 

states that “it understands that FloSports does not oppose delaying claim construction.” 

But as mentioned above, this ignores the fact that FloSports has not asked for a stay, 

SITO would oppose any stay of the FloSports litigation if one were sought, and there is 

ultimately no reason to grant one. Indeed, Hulu’s statement reveals its true goal here, 

which is to simply stay and/or slow this case down. And it cannot be said that Hulu’s 

venue motion, which it waited months to file, conserves judicial resources; instead, it is 

a motion the Court must now consider. But the Markman hearing is not set until March 

5, 2021. Of course, this Court has complete discretion to manage its own resources over 

the next several months as it considers Hulu’s motion to transfer and the parties begin 

to brief claim construction. Indeed, staying this case would interrupt the Court’s own 

docket and case schedules. This factor, therefore, does not weigh in favor of a stay. 

V. Conclusion 

In view of the foregoing, there is no basis for granting a stay pending resolution 

of Hulu’s motion to transfer the case and, accordingly, the motion should be denied. 

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Dated: November 9, 2020 Respectfully submitted, 

/s/Raymond W. Mort, III 

Raymond W. Mort, III 

Texas State Bar No. 00791308 

raymort@austinlaw.com

THE MORT LAW FIRM, PLLC 

100 Congress Avenue, Suite 2000 

Austin, Texas 78701 

Tel/Fax: 512-865-7950 

Of Counsel: 

Ronald M. Daignault (pro hac vice) 

Chandran B. Iyer (pro hac vice) 

Jason S. Charkow (pro hac vice) 

Stephanie R. Mandir (pro hac vice) 

rdaignault@goldbergsegalla.com 

ciyer@goldbergsegalla.com 

jcharkow@ goldbergsegalla.com 

smandir@goldbergsegalla.com 

GOLDBERG SEGALLA LLP 

711 Third Avenue, Suite 1900 

New York, New York 10017 

Telephone: (646) 292-8700 

Attorneys for Plaintiffs SITO Mobile, Ltd. 

and SITO Mobile R&D IP, LLP

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