1613709

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

JENAM TECH, LLC,

Plaintiff,

v.

GOOGLE LLC,

Defendant.

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CIVIL ACTION No. 6:20-cv-00453-ADA

JURY TRIAL DEMANDED

DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO STAY PENDING TRANSFER

Defendant Google LLC (“Google”) respectfully requests a brief stay of all proceedings

pending resolution of Google’s Opposed Motion to Transfer Venue to the Northern District of 

California, ECF No. 25-1. As explained in Google’s motion to transfer, this case involves a

compelling set of facts that demonstrates that the Northern District of California is clearly a 

more convenient forum. The parties are currently engaged in venue discovery, and once venue 

discovery is completed the parties will finish the necessary briefing for the transfer motion. 

“In determining whether a stay is proper, a district court should consider, among

other 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.” Neodron 

Ltd. v. Dell Techs., 2019 U.S. Dist. LEXIS 23309, *10 (W.D. Tex. Dec. 16, 2019) (Albright, 

J.) (citing Yeti Coolers, LLC v. Home Depot U.S.A., Inc., 1:17-cv-342, 2018 WL 2122868, at 

*1 (W.D. Tex. Jan. 8, 2018) (Pitman, J.)). Here, all relevant factors favor the stay.

Plaintiff Jenam Tech, LLC (“Jenam”) cannot argue any prejudice because its desire for 

broad venue discovery from Google, and its delay of several weeks in serving that discovery,

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has substantially delayed briefing and a decision on the transfer motion. Further, there is no 

question that this case is in its infancy since Jenam only determined which patent claims it is 

asserting in December1 and non-venue discovery has not yet begun. If this case is not stayed, 

Google will suffer unnecessary hardship from expending resources on invalidity contentions,

discovery, and claim construction, which will be governed by different rules and procedures if 

this matter is transferred to another district and judge. A stay will also conserve judicial 

resources by avoiding the time-intensive tasks of a Markman hearing and claim construction 

order. Accordingly, all relevant factors favor a stay. 

Moreover, the Federal Circuit has specified that district courts “must first address 

whether it is a proper and convenient venue before addressing any substantive portion of the 

case.” In re Nintendo Co., Ltd., 544 F. App’x 934, 941 (Fed. Cir. 2013); accord In re EMC 

Corp., 501 F. App’x 973, 975 (Fed. Cir. 2013) (stressing “the importance of addressing 

motions to transfer at the outset of litigation”); In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th 

Cir. 2003) (“[The] motion [to transfer] should have taken a top priority in the handling of this 

case by the ... District Court.”); McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 30-31 (3d 

Cir. 1970) (explaining that a “district court should not burden itself with the merits of the 

action” until a venue challenge is decided). Thus, the pending transfer motion should take 

priority, and Google respectfully requests a short stay pending a decision on it.

 

1 On December 4, 2020, Jenam finalized its selection of 65 asserted claims, as directed by the 

Court on August 28, 2020. On January 8, 2021, Jenam further narrowed its claims and stated 

that it is no longer asserting claims 25, 28, and 29 of the 9,923,995 patent.

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Dated: January 22, 2021

By:

Respectfully Submitted,

KEKER, VAN NEST & PETERS LLP

/s/ Matthew M. Werdegar, with permission by 

Michael E. Jones

KEKER, VAN NEST & PETERS LLP

Robert A. Van Nest (CA Bar No. 084065)

Matthew M. Werdegar (CA Bar No. 200470)

Michelle S. Ybarra (CA Bar No. 260697)

Ryan K. Wong (CA Bar No. 267189)

Edward A. Bayley (CA Bar No. 267532)

Jason George (CA Bar No. 307707)

Katie Lynn Joyce (CA Bar No. 308263)

Rylee K. Olm (CA Bar No. 318550)

Kristin E. Hucek (CA Bar No. 321853)

633 Battery Street

San Francisco, CA 94111

Phone: (415) 391-5400

Fax: (415) 397-7188

RVanNest@keker.com

MWerdegar@keker.com

MYbarra@keker.com

RWong@keker.com

EBayley@keker.com

JGeorge@keker.com

KJoyce@keker.com

ROlm@keker.com

KHucek@keker.com

POTTER MINTON

Michael E. Jones (TX Bar No. 10929400)

mikejones@potterminton.com

Patrick C. Clutter (TX Bar No. 24036374)

patrickclutter@potterminton.com

110 N. College, Suite 500

Tyler, Texas 75702

Tel: 903-597-8311

Fax: 903-593-0846

Attorneys for Defendant

Google LLC

Case 6:20-cv-00453-ADA Document 48 Filed 01/22/21 Page 3 of 4
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CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(i), counsel for Defendant, Google LLC, conferred with 

counsel for Plaintiff, Jenam Tech LLC, in a good-faith effort to resolve the matter presented herein 

and counsel for Plaintiff stated that it opposed the motion.

/s/ Matthew M. Werdegar, with 

permission by Michael E. Jones

Matthew M. Werdegar

CERTIFICATE OF SERVICE

The undersigned certifies that on January 22, 2021, I electronically filed this document

with the Clerk of Court via the Court’s CM/ECF system which will send notification of such filing 

to all counsel of record, all of whom have consented to electronic service in this action.

/s/ Matthew M. Werdegar, with 

permission by Michael E. Jones

Matthew M. Werdegar

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