1648500 

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 REPLY IN SUPPORT OF ITS OPPOSED 

MOTION TO STAY PENDING TRANSFER 

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I. INTRODUCTION 

Defendant Google LLC (“Google”) has shown that a stay is necessary pending 

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

California, ECF No. 25-1. All relevant factors favor a stay until Google’s transfer motion is 

resolved: (1) a stay will not prejudice Plaintiff Jenam Tech, LLC (“Jenam”); (2) Google will 

suffer unnecessary hardship and inequity if the action is not stayed; and (3) a stay is necessary 

to preserve judicial resources. See Neodron Ltd. v. Dell Techs., No. 1-19-cv-00903, 2019 U.S. 

Dist. LEXIS 233009, at *10 (W.D. Tex. Dec. 16, 2019). 

Jenam’s continued efforts to delay resolution of the pending transfer motion while 

pushing the case schedule forward further underscore the need for a stay. Once Google filed 

its transfer motion, Jenam embarked on a campaign to impede its prompt resolution by making 

overly broad discovery requests, delaying the meet-and-confer process and its responses to 

Google’s proposed compromises, and most recently refusing to agree to reasonable and 

proportional extensions of Google’s obligations while it seeks to indefinitely delay filing its 

transfer-motion opposition brief. Jenam’s goal is transparent: delay any decision on the 

transfer motion, however meritorious Jenam knows it to be. A stay will prevent these 

obstructionary practices, eliminate the incentive for Jenam to delay resolution of Google’s 

transfer motion, and allow the Court to resolve the transfer motion before any further 

unnecessary resources are spent. 

II. ARGUMENT 

A. A stay will not prejudice Jenam. 

Jenam claims that it will suffer prejudice because Google allegedly has sought to delay 

venue discovery and the briefing of the transfer motion. See Plaintiff’s Opposition to 

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Defendant’s Opposed Motion to Stay Pending Transfer, ECF No. 52 (“Oppo.”). But it is 

Jenam—not Google—who bears responsibility for that delay. 

Google filed its motion to transfer on August 12, 2020, well before the Court’s deadline 

for such a motion. Jenam did not provide Google with draft venue discovery requests relating 

to the transfer motion until August 24, 2020, and its draft requests—spread across twenty-four 

requests for production and eight interrogatories—were overly broad, unduly burdensome, and 

sought information that was neither relevant nor proportional to the motion. Further, the 

majority of these requests were improperly compound, were not limited to the jurisdictions 

relevant to transfer, were not limited to a reasonable time period, and improperly sought 

information about all Google products untethered to the accused functionality. Google’s 

attempts to promptly meet and confer with Jenam regarding these requests were rebuffed by 

Jenam’s frequent failure to respond to Google’s correspondence in a fulsome or timely 

manner. For instance, in September 2020, Jenam took seventeen days to respond to meet-andconfer correspondence from Google regarding its concerns with Jenam’s draft discovery 

requests—and when Jenam finally responded, it simply refused to narrow any of its requests. 

Jenam did not officially serve any venue discovery requests until October 9, 2020, 

nearly two months after Google filed its transfer motion. These requests were similarly overly 

broad and included new requests that had not been mentioned during the parties’ prior venue 

discovery discussions. Google timely served its responses to these requests on November 2, 

2020. Two weeks later, just a few days before the deadline for Jenam to file its opposition to 

Google’s motion to transfer, Jenam alleged for the first time that essentially all of Google’s 

discovery responses were deficient. Despite numerous attempts to meet and confer to narrow 

the outstanding disputes, and despite Google providing supplemental responsive information 

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to Jenam in an attempt to resolve those disputes, Jenam refused to materially narrow its 

discovery requests. It was only when Jenam contacted the Court on December 22, 2020, the 

same day that Jenam’s opposition to Google’s motion to transfer was due to be filed, that 

Jenam finally offered to materially narrow the additional venue discovery it sought from 

Google. Jenam did not provide its positions to Google in a draft joint statement, as directed by 

the Court, until January 14, 2021. Since then, Google has been diligently working to finalize 

the joint statement for submission to the Court, but Jenam revised its positions in the joint 

statement as recently as February 12, 2021, requiring Google to likewise revise its responses.1 

Finally, it is clearly in Google’s interest to resolve the transfer motion promptly so that 

this dispute can be transferred before Google is forced to expend additional resources litigating 

this case in the Western District of Texas. Google has always maintained that Jenam’s venue 

discovery requests are unnecessary because the accused functionality has no connection to 

Texas. See Declaration of Melissa Harrell in Support of Google’s Motion to Transfer Venue, 

ECF No. 25-2. Google was forced to file a motion to stay because, despite Google’s prompt 

filing of its transfer motion, Jenam’s dilatory tactics continue to prevent the parties from 

completing the motion to transfer briefing. Jenam cannot reasonably claim that a stay would 

be prejudicial where its own conduct is prolonging the resolution of the transfer motion.

B. Google will suffer unnecessary hardship if the action is not stayed. 

If this case is not stayed, Google will suffer unnecessary hardship from expending 

resources on invalidity contentions, discovery, and claim construction. Jenam concedes that this 

 

1

 There are also outstanding disputes related to Jenam’s venue discovery responses. In December 

2020, Google discovered that Jenam had omitted material information from its responses, 

leading Jenam to serve amended responses on February 2, 2021. The related information Google 

is seeking now is responsive to Google’s requests and relevant to the transfer analysis. 

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is true, as its opposition says nothing about Google’s arguments regarding discovery and claim 

construction, and instead narrowly argues that Google has had months to develop its invalidity 

contentions because Jenam served its infringement contentions on August 21, 2020. See Oppo. 

at 3-4. But Jenam conveniently omits the fact that those infringement contentions included 455 

asserted claims spread across eight patents, which was an unreasonable number of claims. 

Indeed, during the case management conference on August 28, 2020, the Court ordered 

Jenam to narrow its claims to approximately 65 claims. See ECF No. 35. In response, Jenam 

represented to the Court that it would need access to Google’s non-public source code to narrow 

its claims, see id., thus Google made that source code available for Jenam’s review. Jenam, 

however, never bothered to review that source code. Instead, after Google made its non-public 

source code available for several months, Jenam conceded that it did not need access to it for the 

purposes of narrowing its asserted claims. Jenam then waited until December 4, 2020 to narrow 

its asserted claims to 65 claims—more than three months after the Court’s claim-narrowing 

order and relying on publicly available information that was available to Jenam before filing its 

complaint. Thus, due to Jenam’s unnecessary delay in narrowing its asserted claims, Google has 

only recently been able to develop its invalidity contentions and related claim-specific defenses. 

Further, Jenam’s infringement contentions are impermissibly vague and contain 

numerous deficiencies, and its amended contentions—served on February 12, 2021—do not 

resolve the issues identified by Google.2

 A stay of this action pending resolution of Google’s 

transfer motion would allow Google to avoid litigating the infringement contentions’ 

deficiencies and limit the resources Google is being forced to expend on invalidity contentions, 

 

2

 Moreover, Jenam’s amended infringement contentions were not based on newly identified 

material, thus amendment without leave of court was improper. 

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discovery, and claim construction—all of which will be governed by different procedural and 

local patent rules if this matter is transferred to the Northern District of California. 

C. A stay is necessary to preserve judicial resources. 

A stay will conserve judicial resources by avoiding the time-intensive tasks of a 

Markman hearing and claim construction order. Jenam does not address this argument and 

instead claims that Google chose to move this matter beyond transfer and to discuss the merits by 

requesting that Jenam cure the deficiencies in its infringement contentions. But Jenam ignores 

the fact that this is exactly why a stay is needed—if a stay was in place, Google and the Court 

would not need to devote resources on substantive issues, and could focus entirely on resolving 

the transfer motion. Without a stay in place, Google and the Court are required to keep pace 

with upcoming substantive deadlines, which is a waste of both party and judicial resources. 

As set forth in Google’s motion to transfer, the Northern District of California is clearly a 

more convenient forum, and Google anticipates that this case will ultimately be transferred. 

Venue discovery has confirmed this and shown that there are no party or non-party witnesses in 

the Western District of Texas. Venue discovery also indicates that Jenam has no connection to 

Western Texas and is effectively controlled by an individual who resides in Northern California. 

Moreover, district courts should first address a motion to transfer before addressing any 

substantive portion of the case. See, e.g., In re Nintendo Co., Ltd., 544 F. App’x 934, 941 (Fed. 

Cir. 2013); In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); McDonnell Douglas 

Corp. v. Polin, 429 F.2d 30, 30-31 (3d Cir. 1970). Jenam’s attempts to factually distinguish the 

cases cited by Google ignores that this is well-settled law. 

III. CONCLUSION 

For these reasons, Google asks that the Court grant Google’s motion to stay. 

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Dated: February 23, 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

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CERTIFICATE OF SERVICE

 The undersigned certifies that on February 23, 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/ Michael E. Jones 

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