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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 NOTICE OF CLARIFICATION REGARDING 

JOINT MOTION TO SEVER AND STAY QUANTUM’S CLAIMS AGAINST 

DEFENDANT GEARBOX SOFTWARE, L.L.C. 

Plaintiff Quantum Technology Innovations, LLC (“Quantum”) and Defendant Gearbox 

Software, L.L.C. (“Gearbox”) respectfully file this Joint Notice providing clarification regarding 

the ruling and decisions Gearbox agrees to bound by if the Court grants the parties’ request to 

sever and stay the claims against Gearbox.1

Gearbox states that it agrees to be bound by the infringement determination of the accused 

instrumentalities in the action between Quantum and Valve. Quantum has accused Valve’s Steam 

Application of infringement. (Dkt. 23 ¶ 120; id., Ex. B.) For the avoidance of doubt, this notice 

is not an agreement regarding the alleged use by Gearbox and/or any damages owed to Quantum. 

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 In a related case, the parties submitted a similar motion to sever and stay the plaintiff’s 

claims against Gearbox, pending resolution of the plaintiff’s claims against Valve. Symbology 

Innovations, LLC v. Gearbox Software, L.L.C., No. 2:23-cv-00419, Dkt. 65 (E.D. Tex.). The Court 

ordered the parties to clarify which decisions in the case against Valve that Gearbox agrees to be 

bound by if the severance and stay of its case is granted (id., Dkt. 71), and the Court subsequently 

granted the joint motion to sever and stay, after the parties submitted the notice of clarification 

(id., Dkts. 72, 80). The parties believe a similar notice of clarification would be helpful to the 

Court in this case, and thus submit the present notice. 

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For the avoidance of doubt, Gearbox does not agree to be bound by the outcome of any 

determination of validity of the asserted patents. 

Nonetheless, the parties agree that resolution of Quantum’s claims as to Valve will 

completely resolve Quantum’s claims against Gearbox, and thus Quantum’s claims against 

Gearbox should also be severed and stayed under Federal Rule of Civil Procedure 21. If Valve’s 

Steam App is found to not infringe in the case against Valve, then the ruling is dispositive as to 

Quantum’s claims against Gearbox (which are based on the same accused instrumentalities). 

Furthermore, even if Quantum obtains a judgment in its favor against Valve, Quantum 

agrees to not seek recovery from Gearbox. Indeed, Quantum will have exhausted its rights as a 

patent holder and will be precluded from collecting duplicative damages with respect to the same 

feature of the Steam application from Gearbox. Any recovery that Quantum may obtain from 

Valve would exhaust its claims as to Gearbox, even with respect to method claims. Quanta 

Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 629–631 (2008) (“method patents were exhausted 

by the sale of an item that embodied the method; patentees cannot “extend their rights through 

each downstream purchaser”); In re Katz Interactive Call Processing Patent Litigation, Nos. 07-

ML-1816-B-RGK (FFMx), 07-CV-2322-RGK (FFMx), 2009 WL 8635161, at *4–5 (C.D. Cal. 

May 1, 2009) (applying the rationale of Quanta to find that “[o]nce a service is lawfully sold, 

[there is] no reason why the patentee should be able to somehow prevent the purchaser from 

enjoying the use of the service.”). 

Because resolving the claims against Valve will resolve the claims against Quantum, the 

parties thus respectfully submit that this stipulation weighs in favor of staying Quantum’s claims 

against Gearbox. Gearbox is, at most, a user of the accused instrumentalities. Therefore, Valve is 

the “true defendant” in the present case. In re Nintendo of Am., Inc., 756 F.3d 1363, 1365 (Fed. 

Cir. 2014). The burdens of trial should not be unnecessarily imposed upon its customer, Gearbox, 

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and in the interest of judicial economy, the case should be stayed as to Gearbox. Id.; Opticurrent, 

LLC v. Power Integrations, Inc., No. 16-CV-325-JRG, 2016 WL 9275395, at *4–5 (E.D. Tex. Oct. 

19, 2016) (staying the claims against a reseller where “a finding that [the seller] infringes is a 

prerequisite to recovery from [reseller/distributor]” because “the burdens of trial should not be 

unnecessarily imposed upon [the] customer”); CyWee Grp. Ltd. v. Huawei Device Co., No. 17-

CV-495-WCB, 2018 WL 4002776, at *4 (E.D. Tex. Aug. 22, 2018) (holding that an agreement to 

be bound by the infringement determination supports a stay). 

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Dated: June 12, 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 Quantum Technology 

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 Notice and counsel indicated their agreement with the 

relief requested herein. 

Dated: June 12, 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: June 12, 2024 /s/Michael J. Sacksteder 

Michael J. Sacksteder 

Case 2:23-cv-00425-JRG-RSP Document 47 Filed 06/12/24 Page 5 of 5 PageID #: 707