FUNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

SYMBOLOGY INNOVATIONS, LLC, 

Plaintiff, 

v. 

VALVE CORPORATION, GEARBOX 

SOFTWARE, L.L.C., 

Defendant. 

Civil Action No. 2:23-cv-00419-JRG 

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. SYMBOLOGY’S CASE AGAINST GEARBOX SHOULD BE SEVERED 

AND STAYED PENDING RESOLUTION OF SYMBOLOGY’S CASE 

AGAINST VALVE ..............................................................................................................2

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

Pursuant to the Customer-Suit Exception ................................................................3

B. Symbology’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 ......................................................................................................6

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) .......................................................................................................2 

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

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

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

No. 22-CV-0012, 2023 WL 2898423 (E.D. Tex. Apr. 8, 2023) ............................................4, 5 

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

No. 21-cv-00807, 2022 WL 1037114 (W.D. Tex. Apr. 6, 2022) ..............................................4 

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) ....................................6 

Quantum Tech. Innovations v. Valve Corp. et al, 

No. 23-cv-425 (E.D. Tex. Sept. 18, 2023) (“Quantum”) .......................................................1, 4 

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

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

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, 4 

OTHER AUTHORITIES

Fed. R. Civ. P. 21 ................................................................................................................... passim

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

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I. INTRODUCTION 

Defendant Gearbox Software, L.L.C. (“Gearbox”) and Plaintiff Symbology Innovations, 

LLC (“Symbology”) respectfully submit this Joint Motion to Sever and Stay Symbology’s case 

against Gearbox. Gearbox’s Co-Defendant, Valve Corporation (“Valve”) does not oppose this 

motion. Gearbox, Symbology, and Valve have met and conferred regarding this motion pursuant 

to Local Rule CV-7(h).1

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

mobile application, which is a product of another defendant in this case, Valve. Resolution of 

Symbology’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 Symbology’s claims against Gearbox. 

II. FACTUAL BACKGROUND 

Symbology asserts two patents: U.S. Patent Nos. 8,651,369 (“the ’369 Patent”) and 

8.936,190 (“the ’190 Patent”) (collectively, “the patents-in-suit”). (See Dkt. 52 (“Third Amended 

Complaint” or “TAC”) at 1.) The Third Amended Complaint identifies the allegedly infringing 

technology as Valve’s Steam mobile application. (Id., Ex. 8 at 2; see generally, id..) Valve is 

another defendant in the current case. (See, e.g., id., ¶ 2.) 

1

 In a related case, Quantum Tech. Innovations v. Valve Corp. et al,, No. 23-cv-425 (E.D. Tex. 

Sept. 18, 2023) (“Quantum”), Gearbox and the plaintiff, Quantum Technology Innovations, LLC, 

jointly filed a motion to sever and stay the case against Gearbox pursuant to the customer suit 

doctrine. Quantum at Dkt. 29. That joint motion remains pending. 

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

STAYED PENDING RESOLUTION OF SYMBOLOGY’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 

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). 

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

to the Customer-Suit Exception 

 Because Valve, the developer of the Steam platform and mobile application, is the true 

defendant in this case and because doing so would promote judicial efficiency, the Court should 

sever and stay Symbology’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 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 user of the accused product. The Third 

Amended Complaint in this action does not accuse any Gearbox product of infringement; rather, 

the only allegations of infringement are based on the Steam mobile application—a product of codefendant Valve.2

 (See, e.g., TAC, Ex. 8 at 1 (The only infringement contentions Symbology 

attached to the TAC are directed solely to Valve and contain no references to Gearbox or any 

Gearbox technology); see also Dkt. 55 at 4 (Valve confirming that it “did not work together [with 

Gearbox] to develop the Steam mobile app that is accused of infringement.”).) Indeed, the Third 

2

 Indeed, Gearbox moved to dismiss the Original Complaint, First Amended Complaint, and 

Second Amended Complaint based on, inter alia, failure to state a claim of infringement against 

Gearbox. (Dkts. 31, 36, 44.) Gearbox maintains that Symbology’s Third Amended Complaint 

similarly fails to allege facts that plausibly state a claim of infringement against Gearbox. 

Regardless, Gearbox understands that Symbology’s only claims of infringement would be based 

on Valve’s product (and not on any Gearbox product), and thus brings, together with Symbology, 

the present motion on that basis. 

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Amended Complaint makes clear that Gearbox is not the manufacturer of the Steam mobile 

application, but rather simply “a gaming developer”—like many others—whose games are sold 

on Valve’s Steam platform. (TAC ¶¶ 42–43.) The infringement contentions Symbology served 

on Gearbox are substantively identical to the contentions served on Valve. Because the Third 

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

application and Symbology’s infringement contentions focus solely on Valve’s mobile application 

platform, this factor weighs in favor of a stay. See GreatGigz Sols., LLC v. Costco Wholesale 

Corp., No. 21-cv-00807, 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 Symbology’s case 

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

infringement, 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. 55 at 2 n.3, 14 (Valve referring 

to “Valve’s Steam platform”).) 

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

and staying the Gearbox case. 

B. Symbology’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 

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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, Symbology’s claims against Gearbox are peripheral to Symbology’s claims against 

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

mobile application. Further, Gearbox has played no role in the development, design, or 

implementation of the Valve platform—indeed, as the Third Amended Complaint alleges, Gearbox 

is merely “a gaming developer”—like many others—whose games are sold on Valve’s Steam 

platform. (TAC ¶¶ 42–43.) Symbology’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 Symbology’s case against Valve would 

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

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

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

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

Civil Procedure 21 weigh in favor of severing and staying Symbology’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 Symbology’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. 

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

this motion is jointly filed by both Symbology and Gearbox. Symbology will not be prejudiced or 

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

Second, as discussed above, staying Symbology’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 Symbology jointly 

file this motion at the start of discovery, 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 Symbology respectfully request the Court grant 

their joint motion to sever and stay the case against Gearbox pending final resolution of 

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Symbology’s case against Valve. The other party in this case, Defendant Valve does not oppose 

the requested stay. 

Dated: April 29, 2024 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 Symbology 

Innovations, LLC 

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 29, 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 29, 2024 /s/ Michael J. Sacksteder 

Michael J. Sacksteder 

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