11320822 

IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

ASUS TECHNOLOGY LICENSING INC. 

AND CELERITY IP, LLC,

Plaintiffs,

v.

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., 

AND SAMSUNG RESEARCH AMERICA, 

Defendants.

Civil Action No. 2:23-cv-409 

JURY TRIAL DEMANDED 

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., 

AND SAMSUNG RESEARCH AMERICA,

Counterclaim-Plaintiffs,

v.

ASUS TECHNOLOGY LICENSING INC., 

CELERITY IP, LLC, AND ASUSTEK 

COMPUTER, INC. 

Counterclaim-Defendants.

ASUS TECHNOLOGY LICENSING INC. AND CELERITY IP, LLC'S REPLY IN 

SUPPORT OF MOTION TO DISMISS AND/OR SEVER COUNTERCLAIMS 

AGAINST ASUSTEK 

PUBLIC VERSION ECF 57

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TABLE OF CONTENTS

Page

11320822 - i - 

I. Severance Of Samsung's Infringement Counterclaim Is Warranted ......................................... 1

II. Samsung's Declaratory Judgment Counterclaims Should Be Dismissed .................................. 2

III. Samsung's ETSI Counterclaim Should Be Dismissed ................................................................. 4

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Acevedo v. Allsup's Convenience Stores, Inc., 

600 F.3d 516 (5th Cir. 2010) ...................................................................................................................... 5 

Biovail Lab'ys, Inc. v. Torpharm, Inc., 

2002 WL 31687610 (N.D. Ill. Nov. 26, 2002) ........................................................................................ 3 

CPI Card Grp., Inc. v. Multi Packaging Solutions, Inc., 

No. 16-cv-02536-MEH, 2018 WL 3429197 (D. Colo. July 16, 2018) ................................................. 4 

Evonik Degussa GmbH v. Materia Inc., 

2013 WL 5488519 (D. Del. 2013) ............................................................................................................. 3 

G+ Commc'ns, LLC v. Samsung Elecs. Co., 

No. 2:22-CV-00078-JRG, 2024 WL 233222 (E.D. Tex. Jan. 22, 2024) .............................................. 5 

Hertz Corp. v. Friend, 

559 U.S. 77 (2010) ................................................................................................................................... 1, 2 

Life Partners Inc. v. United States, 

650 F.3d 1026 (5th Cir. 2011) ................................................................................................................... 4 

Optimum Content Protection, LLC v. Microsoft Corp., 

No. 6:13-cv-741-KNM, 2014 WL 12452439 (E.D. Tex. Aug. 25, 2014) ........................................... 5 

Procter & Gamble Co. v. Kimberly-Clark Corp., 

684 F. Supp. 1403 (N.D. Tex. 1987) ........................................................................................................ 3 

Simmons Bedding Co. v. Leggett & Platt, Inc., 

No. 11-cv-00232-WMC, 2012 WL 11909449 (W.D. Wis. Mar. 27, 2012) ......................................... 4 

In re Taasera Licensing LLC, Pat. Litig., 

2023 WL 2917650 (E.D. Tex. Mar. 15, 2023) ......................................................................................... 4 

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Samsung's opposition confirms its claims against ASUSTeK have no place in this case. 

Samsung first attempts to sidestep the inadequacies of its pleading by arguing Plaintiffs lack standing 

to challenge it. Samsung is wrong, but regardless, this is a red herring. Plaintiffs requested severance

of certain Samsung counterclaims against ASUSTeK, including Samsung's claim for infringement of 

an unrelated Samsung patent. Samsung's standing arguments are irrelevant to Plaintiffs' request for 

severance. As to the other counterclaims, the Court should dismiss for lack of subject matter 

jurisdiction. "Courts have an independent obligation to determine whether subject-matter 

jurisdiction exists, even when no party challenges it." Hertz Corp. v. Friend, 559 U.S. 77, 94 (2010). 

Samsung's argument that this Court cannot consider this issue thus flies in the face of fundamental 

constitutional requirements. As to substance, Samsung's entire argument is based on hypothetical 

facts, speculation, and attorney argument, none of which were included in its pleading or give rise to 

a claim, and all of which fail to cure the fatal defects in Samsung’s pleading. 

I. Severance Of Samsung's Infringement Counterclaim Is Warranted 

Samsung fails to identify any evidence that any of the severance factors weigh against granting 

Plaintiffs' motion. 

First, Samsung's argument that its Infringement Claim arises from the same transaction or 

occurrence because the asserted Samsung patent was 

misses the point. Opp. at 15. The "transaction or occurrence" that gives rise to a patent infringement 

claim is the use or sale of an infringing product. See e.g., 35 U.S.C. § 299(a) (joinder of accused 

infringers only appropriate where claims arise out of same transaction or occurrence "relating to the 

making, using, importing into the United States, offering for sale, or selling of the same accused 

product or process."); In re EMC Corp., 677 F.3d 1351, 1359 (Fed. Cir. 2012) ("Unless there is an actual 

link between the facts underlying each claim of infringement, independently developed products using 

differently sourced parts are not part of the same transaction"). And, because Samsung did not even 

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allege willfulness based on , any are irrelevant. 

Second, Samsung does not provide any meaningful argument that there are common questions 

of law or fact, or even dispute that different witnesses and documentary proof would be required to 

adjudicate its claim. Instead, Samsung only argues it is "premature" to evaluate these factors. Samsung 

is wrong. It takes no more than a cursory read of the pleadings to discern that there is no overlap 

between the accused technologies. Plaintiffs' claims relate to 4G/5G technology, whereas Samsung's 

claim relates to Wi-Fi. 

Finally, as to judicial economy and prejudice, Samsung's arguments make no sense. 

ASUSTeK's response to Samsung's pleading is not even due until after Samsung's invalidity 

contentions are due, and it is thus infeasible for Samsung's Infringement Claim to proceed on the 

same schedule. See Dkt. 44 (Docket Control Order, invalidity contentions due July 2, 2024); Dkt. 53 

(Waiver, ASUSTeK's response to Samsung's third-party complaint due July 4, 2024). Samsung should 

not be allowed to use its delay in serving ASUSTeK as a litigation tactic to force a continuance on 

Plaintiffs' claims. Samsung's unsupported attorney argument that severing its claim will "expand the 

scope of discovery" is also wrong. Given the lack of common issues, facts, documents or witnesses, 

there is no reason to believe that litigating the cases as part of one suit would result in any economy. 

II. Samsung's Declaratory Judgment Counterclaims Should Be Dismissed 

Samsung's procedural argument that the Court cannot consider subject matter jurisdiction at 

this junction is incorrect. "Courts have an independent obligation to determine whether subjectmatter jurisdiction exists, even when no party challenges it." Hertz, 559 U.S. at 94. 

As to the merits, Samsung does not identify any factual allegations that ASUSTeK owns any 

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rights the Asserted Patents. Instead, Samsung relies on attorney argument and speculation that 

ASUSTeK "may" have rights in the Asserted Patents. But "[m]ere conclusory allegations of 

jurisdiction are not enough; the party pleading jurisdiction 'must allege in his pleading the facts 

essential to show jurisdiction.'" Celli v. Shoell, 40 F.3d 324, 327 (10th Cir. 1994). Samsung's speculation 

is particularly inadequate where, as here, it is directly contradicted by undisputed, judicially noticeable 

facts. Plaintiffs attached the assignment agreement for each Asserted Patent to the motion, which 

indisputably show ASUSTeK transferred all rights and interest in each Asserted Patent to ATL. See 

e.g. Mot. at Ex. A ("irrevocably and unconditionally" granting ATL "all of [ASUSTeK's] right, title, 

and interest" in the Asserted '878 Patent, "as fully and entirely as the same would have been held and 

enjoyed by [ASUSTeK] if this Agreement had not been made; together with all claims for damages by 

reason of [infringement], and the right to sue for and collect damages"); Exs. B-E (using equivalent 

language to assign all rights in the other Asserted Patents to ATL). There is nothing "murky," Opp. 

at 9, about ASUSTeK's rights. Courts have repeatedly found near-identical language sufficient to 

effect a complete assignment, warranting dismissal of counterclaims against a previous assignee. E.g., 

Procter & Gamble Co. v. Kimberly-Clark Corp., 684 F. Supp. 1403, 1405 (N.D. Tex. 1987) (dismissing 

claims against prior assignee where the assignment stated "Raychem hereby assigns its entire right, 

title and interest in and to Said Patents to P & G . . . together with all claims for damages by reason 

of past infringements of Said Patents, with the right to sue for and collect the same;" because "[t]he 

plain language . . . clearly indicates that Raychem has divested itself of all ownership rights in the 

Althouse patent."); Biovail Lab'ys, Inc. v. Torpharm, Inc., 2002 WL 31687610, at *3 (N.D. Ill. Nov. 26, 

2002) (similar); Evonik Degussa GmbH v. Materia Inc., 2013 WL 5488519, *2-*5 (D. Del. 2013) (similar).1

 

1

 ASUSTeK has even less of an interest than the dismissed parties in each of the above-cited cases. 

In each of those cases, the previous assignee still owned the patent when the case was filed. Here, 

ASUSTeK was not the assignee when ATL and Celerity first alleged infringement in a pleading. 

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Samsung's only other argument is that the Court has subject matter jurisdiction because 

Plaintiffs' claims are "ultimately traceable" to ASUSTeK. Opp. at 9. But there are no factual 

allegations that support this argument. Instead, Samsung relies on attorney argument to ask the Court 

to pierce the corporate veil based on nothing more than the fact that ASUSTeK previously owned the 

Asserted Patents.2

 The burden of establishing subject matter jurisdiction rests solely with Samsung. 

Life Partners Inc. v. United States, 650 F.3d 1026, 1029 (5th Cir. 2011). Speculation and attorney argument 

as to ASUSTeK's rights and control is insufficient. ASUSTeK is neither the assignee nor exclusive 

licensee of any of the Asserted Patents, ASUSTeK has no standing to assert infringement of the 

Asserted Patents, and there are no well-pled facts that establish subject matter jurisdiction. Samsung's 

Declaratory Judgment Counterclaims should thus be dismissed as to ASUSTeK. In re Taasera Licensing 

LLC, Pat. Litig., 2023 WL 2917650, at *11 (E.D. Tex. Mar. 15, 2023) (Gilstrap, J.) (granting motion to 

dismiss declaratory judgment claims because "there is no case or controversy since [counterclaim 

defendant] has no right to the Asserted Patents."). 

III. Samsung's ETSI Counterclaim Should Be Dismissed 

Samsung's arguments with respect to the ETSI Counterclaim are also misplaced. Nowhere in 

Samsung's Opposition does it grapple with the simple fact that, even assuming the Asserted Patents 

are SEPS subject to ETSI obligations, ASUSTeK is not the SEP holder. For all the reasons set out 

in Plaintiffs' Motion, the Court lacks subject matter jurisdiction over the ETSI Counterclaim because 

there is no case or controversy between Samsung and ASUSTeK. Indeed, Samsung still fails to 

identify any factual allegations that could give rise to a breach of obligation on behalf of ASUSTeK. 

The only factual allegation Samsung points to is that ASUSTeK "divided up the ASUS[TeK] patent 

2

 Samsung’s cited cases are inapposite. In Simmons, the defendant controlled its subsidiary and 

engaged in "gamesmanship." 2012 WL 11909449, at *9. In CPI Card, the Court found it did not

have subject matter jurisdiction over previous assignee. 2018 WL 3429197 at *2-5. 

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portfolio." Opp. at 11. But "dividing up" patents is not a breach of obligation, and Samsung cites no 

authority to the contrary. 

Even if Samsung could properly allege a claim against ASUSTeK (which it cannot), the Court 

should dismiss or sever the claims against ASUSTeK pursuant to Rule 21. Samsung pays lip service 

to Rule 20, but fails to discuss any of the factors the Court considers in evaluating permissive joinder, 

see Acevedo v. Allsup's Convenience Stores, Inc., 600 F.3d 516, 522 (5th Cir. 2010), effectively conceding that 

if ASUSTeK is not a required party under Rule 19, it would not be properly joined. 

With respect to Rule 19, Samsung attempts to avoid the statutory requirements by simply 

asserting that ASUSTeK is a necessary party for contract interpretation purposes. Opp. at 12. 

Samsung is incorrect – its own cited case, Optimum Content Protection, LLC v. Microsoft Corp., explains 

that the rationale behind this general guidance is to protect the contracting party's interest. No. 6:13-

cv-741-KNM, 2014 WL 12452439, at *3 (E.D. Tex. Aug. 25, 2014). Here, Plaintiffs are now the 

patent owner and exclusive licensee. ASUSTeK has no relevant interest that needs protecting. Further, 

there are no unique contract interpretation issues that require ASUSTeK's involvement. The contract 

in question is a standard ETSI declaration the Court has interpreted before. E.g., G+ Commc'ns, LLC 

v. Samsung Elecs. Co., No. 2:22-CV-00078-JRG, 2024 WL 233222 (E.D. Tex. Jan. 22, 2024). 

Rule 19 instructs that a party is indispensable where "the court cannot accord complete relief 

among existing parties." Fed. R. Civ. P. 19. Samsung does not meaningfully dispute complete relief 

can be accorded without ASUSTeK, and it even acknowledges "Celerity is also bound by ASUSTeK's 

ETSI Declaration(s)." Opp. at 5. This admission shows why ASUSTeK is not a necessary party. 

Celerity drove the pre-suit negotiations, Celerity is bound by any declarations ASUSTeK previously 

signed, and Celerity as the exclusive licensee is the party who would be impacted by Samsung's 

requested declaration. For these reasons Plaintiffs respectfully request the Court dismiss or sever 

Samsung's Counterclaims as to ASUSTeK. 

Case 2:23-cv-00409-JRG-RSP Document 59 Filed 04/30/24 Page 8 of 14 PageID #: 1026
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DATED: April 23, 2024. Respectfully submitted, 

/s/ Rebecca Carson 

Robert C. Bunt 

Texas State Bar No. 00787165 

rcbunt@pbatyler.com 

PARKER, BUNT & AINSWORTH, P.C.

100 E. Ferguson, Suite 418 

Tyler, Texas 75702 

Tel: (903) 531-3535 

Jason Sheasby 

California State Bar No. 205455 

(pro hac vice to be filed) 

jsheasby@irell.com 

Rebecca Carson 

California State Bar No. 254105 

(pro hac vice) 

rcarson@irell.com 

Christopher Abernethy 

California State Bar No. 275986 

(pro hac vice) 

cabernethy@irell.com 

Tony Rowles 

California State Bar No. 301209 

(pro hac vice) 

trowles@irell.com 

Benjamin Manzin-Monnin 

California State Bar No. 325381 

(pro hac vice) 

bmonnin@irell.com 

Jordan Nafekh 

California State Bar No. 328151 

(pro hac vice) 

jnafekh@irell.com 

Russell Hoover 

California State Bar No. 334913 

(pro hac vice) 

rhoover@irell.com 

IRELL & MANELLA LLP 

1800 Avenue of the Stars, Suite 900 

Los Angeles, CA 90067-4276 

Tel: (310) 277-1010 

Jamie H. McDole 

 State Bar No. 24082049 

Phillip B. Philbin 

 State Bar No. 15909020 

Michael D. Karson 

 State Bar No. 24090198 

Miranda Y. Jones 

 State Bar No. 24065519 

Case 2:23-cv-00409-JRG-RSP Document 59 Filed 04/30/24 Page 9 of 14 PageID #: 1027
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Grant Tucker 

 State Bar No. 24121422 

Matthew L. Vitale 

 State Bar No. 24137699 

WINSTEAD PC 

2728 N. Harwood Street 

Suite 500 

Dallas, Texas 75201 

Tel.: 214.745.5400 

Fax: 214.745.5390 

Email: jmcdole@winstead.com 

pphilbin@winstead.com 

mkarson@winstead.com 

mjones@winstead.com 

gtucker@winstead.com 

mvitale@winstead.com 

ATTORNEYS FOR PLAINTIFFS 

ASUS TECHNOLOGY LICENSING INC. 

AND CELERITY IP, LLC 

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Case 2:23-cv-00409-JRG-RSP Document 59 Filed 04/30/24 Page 11 of 14 PageID #: 1029
11321089.1 01

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

ASUS TECHNOLOGY LICENSING INC. 

AND CELERITY IP, LLC,

Plaintiffs,

v.

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., 

AND SAMSUNG RESEARCH AMERICA, 

Defendants.

Civil Action No. 2:23-cv-409

JURY TRIAL DEMANDED

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC., 

AND SAMSUNG RESEARCH AMERICA,

Counterclaim-Plaintiffs,

v.

ASUS TECHNOLOGY LICENSING INC., 

CELERITY IP, LLC, AND ASUSTEK 

COMPUTER, INC. 

Counterclaim-Defendants.

DECLARATION OF REBECCA CARSON IN SUPPORT OF ASUS TECHNOLOGY 

LICENSING INC. AND CELERITY IP, LLC'S REPLY IN SUPPORT OF MOTION TO 

DISMISS AND/OR SEVER COUNTERCLAIMS AGAINST ASUSTEK

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11321089.1 01 - 1 -

DECLARATION OF REBECCA CARSON

I, Rebecca Carson, declare as follows:

1. I am an attorney at the law firm of Irell & Manella LLP, counsel for Plaintiffs ASUS

Technology Licensing Inc., and Celerity IP, LLC. I am a member in good standing of the State Bar 

of California and have been duly licensed to practice law before all of the courts of the State of 

California, and have been admitted to practice pro hac vice before this Court. I have personal 

knowledge of the matters set forth in this declaration and, if called as a witness, could testify to its 

contents.

2. Attached as Exhibit G is a true and correct copy of 

Executed on April 23, 2024. I declare under penalty of perjury that the foregoing is to the best 

of my knowledge and belief.

By: /s/ Rebecca Carson

Rebecca Carson

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11321089.1 01 - 2 -

CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the above and foregoing document has been 

served on all counsel of record via email on April 23, 2024.

/s/ Jordan Nafekh

Jordan Nafekh

Case 2:23-cv-00409-JRG-RSP Document 59 Filed 04/30/24 Page 14 of 14 PageID #: 1032