FUNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

QUANTUM TECHNOLOGY INNOVATIONS, 

LLC, 

Plaintiff, 

v. 

VALVE CORPORATION, GEARBOX 

SOFTWARE, L.L.C., 

Defendant. 

Civil Action No. 2:23-cv-00425-JRG-RSP 

JURY TRIAL DEMANDED 

JOINT MOTION TO SEVER AND STAY CLAIMS 

AGAINST DEFENDANT GEARBOX SOFTWARE, L.L.C. 

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TABLE OF CONTENTS 

Page 

I. INTRODUCTION ...............................................................................................................1

II. FACTUAL BACKGROUND ..............................................................................................1

III. QUANTUM’S CASE AGAINST GEARBOX SHOULD BE SEVERED 

AND STAYED PENDING RESOLUTION OF QUANTUM’S CASE 

AGAINST VALVE ..............................................................................................................1

A. Quantum’s Case Against Gearbox Should be Severed and Stayed 

Pursuant to the Customer-Suit Exception ................................................................2

B. Quantum’s Case Against Gearbox Should Be Severed and Stayed 

Pursuant to Fed. R. Civ. P. 21 ..................................................................................4

C. The Traditional Stay Factors Also Favor Severing and Staying Claims 

Against Gearbox ......................................................................................................5

IV. CONCLUSION ....................................................................................................................6

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TABLE OF AUTHORITIES 

Page(s) 

CASES

Brunet v. United Gas Pipeline Co., 

15 F.3d 500 (5th Cir. 1994) .......................................................................................................1 

Cellular Commc’ns Equip., LLC. v. Apple Inc., 

No. 14-cv-251, 2016 WL 6884648 (E.D. Tex. Aug. 26, 2016) .........................................2, 4, 5 

Dali Wireless, Inc. v. AT&T Corp., 

No. 22-CV-0012, 2023 WL 2898423 (E.D. Tex. Apr. 8, 2023) ................................................4 

GreatGigz Sols., LLC v. Costco Wholesale Corp., 

No. 21-cv-00807, 2022 WL 1037114 (W.D. Tex. Apr. 6, 2022) ..............................................3 

In re Google Inc., 

588 F. App’x 988 (Fed. Cir. 2014) ............................................................................................2 

In re Nintendo of Am., Inc., 

756 F.3d 1363 (Fed. Cir. 2014)..................................................................................................2 

Network Sys. Techs., LLC v. Samsung Elecs. Co., 

No. 22-cv-00481-JRG, 2023 WL 7649372 (E.D. Tex. Nov. 14, 2023) ....................................5 

Saint Lawrence Commc’ns LLC v. Apple Inc., 

No. 16-cv-82-JRG, 2017 WL 3712912 (E.D. Tex. July 12, 2017) ........................................4, 5 

Shifferaw v. Emson USA, 

No. 09-cv-54, 2010 WL 1064380 (E.D. Tex. Mar. 18, 2010) ...................................................4 

Westport Fuel Sys. Can., Inc. v. Nissan N. Am., Inc., 

No. 21-cv-0455-JRG, 2023 WL 346807 (E.D. Tex. Jan. 20, 2023) ..........................................3 

STATUTES AND RULES

Federal Rule of Civil Procedure 21 .........................................................................................1, 4, 5 

Local Rule CV-7(h) .........................................................................................................................1 

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I. INTRODUCTION 

Defendant Gearbox Software, L.L.C. (“Gearbox”) and Plaintiff Quantum Technology 

Innovations, L.L.C. (“Quantum”) respectfully submit this Joint Motion to Sever and Stay 

Quantum’s case against Gearbox. Gearbox’s Co-Defendant, Valve Corporation (“Valve”) does 

not oppose this motion. Gearbox, Quantum and Valve have met and conferred regarding this 

motion pursuant to Local Rule CV-7(h). 

Quantum’s allegations of infringement in this case are directed solely to the Steam 

Platform, which is a product of another defendant in this case, Valve. Resolution of Quantum’s 

claims against Valve will resolve major issues concerning the claims against Gearbox, and staying 

the case as to Gearbox will serve the goals of efficiency and judicial economy. Under each of the 

customer-suit doctrine, Federal Rule of Civil Procedure 21, and the traditional stay factors, this 

Court should sever and stay Quantum’s claims against Gearbox. 

II. FACTUAL BACKGROUND 

Quantum asserts one patent: U.S. Patent No. 7,650,376 (“the patent-in-suit”). (See Dkt. 23 

(“Amended Complaint”) at 1.) The Amended Complaint identifies the allegedly infringing 

technology as Valve’s Steam platform. (Id., Ex. B at 2, Ex. C at 2.) Valve is another defendant in 

the current case. (Id., e.g., ¶ 2.) 

III. QUANTUM’S CASE AGAINST GEARBOX SHOULD BE SEVERED AND 

STAYED PENDING RESOLUTION OF QUANTUM’S CASE AGAINST VALVE 

The trial court has broad discretion in severing and staying actions. Brunet v. United Gas 

Pipeline Co., 15 F.3d 500, 505 (5th Cir. 1994) (citing Fed. R. Civ. P. 21). Under Federal Rule of 

Civil Procedure 21, a court may “sever any claim against a party.” Fed. R. Civ. P. 21. Courts 

have found that one reason for severance exists under the “customer suit doctrine.” That is, 

“[w]hen a patent owner files an infringement suit against a manufacturer’s customer and the 

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manufacturer then files an action of noninfringement or patent invalidity, the suit by the 

manufacturer generally take precedence.” In re Nintendo of Am., Inc., 756 F.3d 1363, 1365 (Fed. 

Cir. 2014). The doctrine “exists to avoid, if possible, imposing the burdens of trial on the customer, 

for it is the manufacturer who is generally the ‘true defendant’ in the dispute.” Id. If the two suits 

against the manufacturer and against the customer are so closely related that “substantial savings 

of litigation resources can be expected,” then the court will stay the proceedings until resolution 

of at least the “major premises.” In re Google Inc., 588 F. App’x 988, 991 (Fed. Cir. 2014). The 

customer suit doctrine is also applicable where the manufacturer and customer are sued in the same 

action. In that situation, the court may sever and stay the claims against the customer, pending 

resolution of the claims against the manufacturer. In re Nintendo, 756 F.3d at 1365 (vacating 

district court decision and ordering the stay of the case as to the retailer defendants, pending 

resolution of the case against the manufacturer); see also Cellular Commc’ns Equip., LLC. v. Apple 

Inc., No. 14-cv-251, 2016 WL 6884648 (E.D. Tex. Aug. 26, 2016) (severing and staying claims 

against cell phone service carriers in a suit where the accused products were the iPhone and iPad 

because the “true defendant” was Apple). 

A. Quantum’s Case Against Gearbox Should be Severed and Stayed Pursuant 

to the Customer-Suit Exception 

 Because Valve, the developer of the Steam platform, is the true defendant in this case and 

because doing so would promote judicial efficiency, the Court should sever and stay Quantum’s 

claims against Gearbox under the customer-suit doctrine. Three factors are evaluated to determine 

whether the customer-suit exception applies: “(1) whether the customer[s] in the first filed action 

[are] mere reseller[s] of products manufactured [ ] by the party in the second filed action, 

(2) whether the customer[s] in the first filed action [have] agreed to be bound by any decision in 

the second filed action, and (3) whether the [manufacturers] in the second filed action [are] the 

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only source of the allegedly infringing activity or product.” Westport Fuel Sys. Can., Inc. v. Nissan 

N. Am., Inc., No. 21-cv-0455-JRG, 2023 WL 346807, at *1 (E.D. Tex. Jan. 20, 2023). Each of the 

three customer-suit factors favor severing and staying the case as to Gearbox. 

As to the first factor, Gearbox is, at most, a reseller (if not merely a user) of the accused 

products. The Amended Complaint in this action does not accuse any Gearbox product of 

infringement; rather, the only allegations of infringement are based on the Steam platform—a 

product of co-defendant Valve.1 (See, e.g., Amended Complaint, Ex. C at 2 (Quantum alleging 

that “Gearbox utilizes Valve’s Steam platform ... to distribute and deliver content such as games 

to customers”).) Indeed, the Amended Complaint makes clear that Gearbox is not the 

manufacturer of the Steam platform, but rather simply “one of thousands of game developers that 

sell their products on Valve’s Steam platform.” (Dkt. 8 at 3 n.3.) The infringement contentions 

Quantum served on Gearbox are substantively identical to the contentions served on Valve. 

Because the Amended Complaint, at most, alleges infringement through use of the Valve Steam 

platform and Quantum’s infringement contentions focus solely on Valve’s Steam platform, this 

factor weighs in favor of a stay. See GreatGigz Sols., LLC v. Costco Wholesale Corp., No. 21-cv00807, 2022 WL 1037114, at *3 (W.D. Tex. Apr. 6, 2022); see also Westport, 2023 WL 346807, 

at *3 (finding GM was a mere reseller of the allegedly infringing fuel injector where GM simply 

incorporated the accused product into its vehicles and did not in any way modify the accused 

technology). As to the second factor, to the extent decisions in Quantum’s case against Valve 

resolve whether the accused Valve product meets the patent claims for purposes of infringement, 

1

 Indeed, Gearbox moved to dismiss the original Complaint based on, inter alia, failure to state a 

claim of infringement against Gearbox. (Dkt. 18.) Gearbox maintains that Quantum has still failed 

to allege facts that plausibly state a claim of infringement against Gearbox. Regardless, Gearbox 

understands that Quantum’s only claims of infringement are based on Valve’s product (and not on 

any Gearbox product), and thus brings, together with Quantum, the present motion on that basis. 

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Gearbox agrees to be bound by such rulings. As to the third factor, Valve is, to Gearbox’s 

knowledge, the only source of the accused Valve product. Indeed, there is no dispute that Valve 

is the sole source of the accused product. (See, e.g., Dkt. 8 at 3 n.3 (Valve identifying the accused 

product as “Valve’s Steam platform”).) 

Accordingly, all three factors under the customer-suit doctrine weigh in favor of severing 

and staying the Gearbox case. 

B. Quantum’s Case Against Gearbox Should Be Severed and Stayed Pursuant 

to Fed. R. Civ. P. 21 

“Even when the customer-suit exception does not strictly apply, courts have analyzed 

whether Rule 21 applies to sever and stay a case.” Dali Wireless, Inc. v. AT&T Corp., No. 22-CV0012, 2023 WL 2898423, at *2 (E.D. Tex. Apr. 8, 2023). “In such circumstances, courts consider 

two factors: (1) whether the remaining claims are peripheral to the severed claims, and (2) whether 

adjudication of the severed claims would potentially dispose of the remaining claims.” Id. (citing 

Saint Lawrence Commc’ns LLC v. Apple Inc., No. 16-cv-82-JRG, 2017 WL 3712912, at *2 (E.D. 

Tex. July 12, 2017)). The Rule 21 factors likewise favor severing and staying the case as to Gearbox. 

Regarding the first factor, “where a single manufacturer is the only entity in the U.S. who 

makes and sells the only accused products to retailers, a patent infringement claim against a retailer 

is peripheral to the claims against the manufacturer.” Cellular Commc’ns, 2016 WL 6884648, at 

*2 (quoting Shifferaw v. Emson USA, No. 09-cv-54, 2010 WL 1064380, at *3 (E.D. Tex. Mar. 18, 

2010)). Here, Quantum’s claims against Gearbox are peripheral to Quantum’s claims against 

Valve because Valve is the only entity in the U.S. that makes and distributes the accused Valve 

platform. Further, Gearbox has played no role in the development, design, or implementation of 

the Valve platform—indeed, as the Amended Complaint alleges, Gearbox is merely “one of 

thousands of game developers that sell their products on Valve’s Steam platform.” (Dkt. 8 at 3 n.3.) 

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Quantum’s claims as to Gearbox are thus peripheral to those asserted against Valve. See Saint 

Lawrence Commc’ns, 2017 WL 3712912, at *2 (finding the plaintiff’s claims against the carrier 

defendants peripheral to those against Apple where the only accused product was the iPhone 

because the carrier defendants played no role in the “development, design, or implementation of 

the relevant software code”). 

Regarding the second factor, this Court has instructed that a case involving the 

manufacturer “need only have the potential to resolve ‘major issues’ concerning the claims against 

the customer—not every issue—in order to justify a stay of customer suits.” Id. (quoting Cellular 

Commc’ns, 2016 WL 6884648, at *3). Here, a decision in Quantum’s case against Valve would 

resolve major issues in the claims against Gearbox, as Quantum’s claims of infringement by 

Gearbox are based on a Valve product, and Quantum’s case against Valve will resolve whether 

that Valve product meets the claimed limitations for purposes of infringement. 

Accordingly, like the customer-suit factors, the factors provided under Federal Rule of 

Civil Procedure 21 weigh in favor of severing and staying Quantum’s claims against Gearbox. 

C. The Traditional Stay Factors Also Favor Severing and Staying Claims 

Against Gearbox 

Finally, the traditional stay factors also favor severing and staying Quantum’s claims 

against Gearbox. In the context of customer suits, three factors are evaluated: “(1) whether a stay 

will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2) whether 

a stay will simplify the issues in question and the trial of the case; and (3) whether discovery is 

complete and whether a trial date has been set.” Network Sys. Techs., LLC v. Samsung Elecs. Co.,

No. 22-cv-00481-JRG, 2023 WL 7649372, at *8 (E.D. Tex. Nov. 14, 2023). Each of the traditional 

stay factors weigh in favor of a stay. 

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First, Quantum will not be prejudiced by staying the case against Gearbox. Notably, this 

motion is jointly filed by both Quantum and Gearbox. Quantum will not be prejudiced or harmed 

by staying the claims against Gearbox and Quantum does not argue otherwise. 

Second, as discussed above, staying Quantum’s case against Gearbox will simplify the 

issues and promote judicial economy.

Third, the timing of this case weighs in favor of a stay. Gearbox and Quantum jointly file 

this motion before discovery has even begun, and this case is well within the timeframe that this 

Court has considered appropriate to grant such a stay. Staying the case against Gearbox at this 

point will give effect to the purposes of the customer suit exception, promote judicial efficiency, 

and protect Valve’s customer, Gearbox, from unnecessary litigation. 

IV. CONCLUSION 

For the foregoing reasons, Gearbox and Quantum respectfully request the Court grant their 

joint motion to sever and stay the case against Gearbox pending final resolution of Quantum’s case 

against Valve. The other party in this case, Defendant Valve does not oppose the requested stay. 

 

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Dated: April 5, 2025 Respectfully submitted, 

By: /s/ Randall Garteiser 

Christopher A. Honea 

Texas Bar No. 24059967 

Email: chonea@ghiplaw.com 

Randall Garteiser 

Texas Bar No. 24038912 

Email: rgarteiser@ghiplaw.com 

M. Scott Fuller 

Texas Bar No. 24036607 

Email: sfuller@ghiplaw.com 

GARTEISER HONEA, PLLC 

119 W. Ferguson Street 

Tyler, TX 75702 

Telephone: (903) 705-7420 

Facsimile: (903) 405-3999 

Attorneys for Quantum Technology 

Innovations, L.L.C. 

By: /s/ Michael J. Sacksteder 

Michael J. Sacksteder 

CA Bar No. 191605 (Admitted to E.D. Texas)

Email: msacksteder@fenwick.com 

FENWICK & WEST LLP 

555 California Street, 12th Floor 

San Francisco, CA 94104 

Telephone: (415) 875-2300 

Geoffrey Miller, TBN 24094847 

Email: gmiller@fenwick.com 

FENWICK & WEST LLP 

902 Broadway, 18th Floor 

New York, NY 10010 

Tel: (212) 921-2001 

Jessica M. Kaempf 

WA Bar No. 51666 (Admitted to E.D. Texas) 

Email: jkaempf@fenwick.com 

FENWICK & WEST LLP 

401 Union Street, 5th Floor 

Seattle, WA 98101 

Telephone: (206) 389-4510 

Attorneys for Gearbox Software, L.L.C.

 

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CERTIFICATE OF CONFERENCE 

 The undersigned hereby represents and confirms that a conference was conducted with 

counsel for all parties prior to filing this Motion and counsel indicated their agreement with the 

relief requested herein. 

Dated: April 5, 2024 /s/ Michael J. Sacksteder 

Michael J. Sacksteder 

CERTIFICATE OF SERVICE 

 The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served to all counsel of record who are deemed to have consented to electronic 

service via the Court’s CM/ECF system. 

Dated: April 5, 2024 /s/ Michael J. Sacksteder 

Michael J. Sacksteder 

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