IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

v.

AT&T SERVICES INC.; AT&T MOBILITY 

LLC; and AT&T CORP.,

Defendants,

NOKIA OF AMERICA CORPORATION and 

ERICSSON INC.,

Intervenors.

Case No. 2:23-cv-00202-JRG-RSP

(Lead Case)

JURY TRIAL DEMANDED

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

v.

VERIZON COMMUNICATIONS, INC. AND 

CELLCO PARTNERSHIP D/B/A VERIZON 

WIRELESS,

Defendants,

NOKIA OF AMERICA CORPORATION and 

ERICSSON INC.,

Intervenors.

Case No. 2:23-cv-00203-JRG-RSP

(Member Case)

JURY TRIAL DEMANDED

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

v.

T-MOBILE USA, INC.,

Defendants,

NOKIA OF AMERICA CORPORATION and 

ERICSSON INC.,

Intervenors.

Case No. 2:23-cv-00204-JRG-RSP

(Member Case)

JURY TRIAL DEMANDED

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 1 of 9 PageID #: 1127
and

XR COMMUNICATIONS LLC dba

VIVATO TECHNOLOGIES,

Plaintiff,

vs.

VERIZON COMMUNICATIONS, INC., 

CELLCO PARTNERSHIP dba VERIZON 

WIRELESS,

Defendants.

ERICSSON INC. and

NOKIA OF AMERICA CORPORATION,

Intervenors.

Civil Action No. 2:23-CV-00470-JRG

(Lead Case)

JURY TRIAL DEMANDED

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

v.

AT&T SERVICES INC.; AT&T MOBILITY 

LLC; and AT&T CORP.,

Defendants,

NOKIA OF AMERICA CORPORATION and 

ERICSSON INC.,

Intervenors.

Case No. 2:23-cv-00468-JRG-RSP

(Member Case)

JURY TRIAL DEMANDED

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

v.

T-MOBILE USA, INC.,

Defendants,

NOKIA OF AMERICA CORPORATION and 

ERICSSON INC.,

Intervenors.

Case No. 2:23-cv-00469-JRG-RSP

(Member Case)

JURY TRIAL DEMANDED

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 2 of 9 PageID #: 1128
JOINT MOTION TO CONSOLIDATE CASES

Plaintiff XR Communications, LLC dba Vivato Technologies (“Plaintiff”) and Defendants 

AT&T Corp., AT&T Mobility LLC, and AT&T Services, Inc. (AT&T”), Verizon 

Communications, Inc. and Cellco Partnership d/b/a Verizon Wireless (“Verizon”), T-Mobile USA, 

Inc. (“T-Mobile”), and Intervenors Ericsson Inc. (“Ericsson”) and Nokia of America Corporation 

(“Nokia”) (collectively, “Defendants/Intervenors”) respectfully request that the Court consolidate 

for pre-trial the above-captioned lead case (2:23-cv-00202) and associated member cases (2:23-

cv-00203 and 2:23-cv-00204) with the follow-on lead case (2:23-cv-00470), and associated 

member cases (2:23-cv-00468 and 2:23-cv-00469) and put all six cases on the same schedule as 

set forth in Case No. 2:23-cv-00470, at Dkt. No. 41, with the additional of several deadlines 

requested below. Likewise, the parties request that the two cases against each carrier (e.g., Civil 

Action Nos. 2:23-cv-00203-JRG-RSP and 2:23-CV-00470-JRG for Verizon) be consolidated for 

trial. The result of this motion will be one consolidated case for pretrial (rather than two) and three 

consolidated cases for trial (rather than six).

This request is made jointly by Plaintiff, Defendants, and Intervenors and, as shown further 

below, is not made for the purposes of delay, but rather to secure the just, speedy, and inexpensive 

determination of these several actions.

I. FACTUAL AND PROCEDURAL BACKGROUND 

These cases span six actions brought by Plaintiff, two each against Defendants AT&T, TMobile, and Verizon. Plaintiff filed the first set of three cases on May 8, 2023, alleging in 

individual actions (“XR1 cases”) that each of AT&T, T-Mobile, and Verizon infringe five patents. 

The Court sua sponte consolidated for pretrial the below cases, and the lead case is 2:23-cv-00202.

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 3 of 9 PageID #: 1129
XR Communications LLC dba Vivato Technologies 

v. AT&T Services Inc., et al

Case No. 2:23-cv-00202 (Lead)

XR Communications LLC dba Vivato Technologies 

v. Verizon Communications, Inc., et al

Case No. 2:23-cv-00203 (Member)

XR Communications LLC dba Vivato Technologies 

v. T-Mobile USA, Inc.

Case No. 2:23-cv-00204 (Member)

The operative DCO for the XR1 cases is attached hereto as Ex. A. 

On October 4, 2023, XR filed a second set of cases (“XR2 cases”), again alleging in 

individual actions that each of AT&T, T-Mobile, and Verizon infringe two patents, both of which 

are in the same family as U.S. Patent No. 10,715,235 that is at issue in the XR1 cases. The Court 

sua sponte consolidated the XR2 cases, and the lead case is 2:23-cv-00470.

XR Communications LLC dba Vivato Technologies 

v. Verizon Communications, Inc., et al

Case No. 2:23-cv-00470 (Lead)

XR Communications LLC dba Vivato Technologies 

v. AT&T Services Inc., et al

Case No. 2:23-cv-00468 (Member)

XR Communications LLC dba Vivato Technologies 

v. T-Mobile USA, Inc.

Case No. 2:23-cv-00469 (Member)

The operative DCO in the XR2 cases is attached hereto as Ex. B. The following table summarizes 

certain key dates from the DCO in both cases. 

Event Date (No. 2:23-cv-00202) Date (No. 2:23-cv-00470)

Jury Selection March 3, 2025 July 21, 2025

Pretrial Conference January 27, 2025 June 16, 2025

File Dispositive Motions and 

Motions to Strike Expert 

Testimony

November 25, 2024 April 14, 2025

Deadline to Complete Fact 

Discovery and File Motions to 

Compel

October 4, 2024 February 25, 2025

Claim Construction Hearing September 11, 2024 February 4, 2025

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 4 of 9 PageID #: 1130
II. ARGUMENT AND CITATIONS TO AUTHORITY

The Parties have diligently litigated both sets of cases and have cooperatively engaged in 

discovery without the Court’s involvement to date. By virtue of engaging in those efforts, the 

Parties have determined that the overlap in the asserted patents, accused products, and 

knowledgeable witnesses (from both the Parties and third parties) is overwhelming. For example, 

recent third-party and party deposition notices have crystallized the overlapping issues in both 

cases, and as a result, the Parties have determined that the time spent and resources used of the 

Court and the Parties will be meaningfully decreased by consolidating the XR1 cases with the XR2 

cases. 

Pursuant to Federal Rule of Civil Procedure 42 and the Court’s inherent authority to 

efficiently manage its docket, the Parties request that the Court enter an order consolidating the 

XR1 cases into the XR2 cases, such that the remaining cases are: 

XR Communications LLC dba Vivato Technologies 

v. Verizon Communications, Inc., et al

Case No. 2:23-cv-00470 (Lead)

XR Communications LLC dba Vivato Technologies 

v. AT&T Services Inc., et al

Case No. 2:23-cv-00468 (Member)

XR Communications LLC dba Vivato Technologies 

v. T-Mobile USA, Inc.

Case No. 2:23-cv-00469 (Member)

The result of such a consolidation would be that the six cases would proceed through pretrial under 

a single lead case number (instead of two), and the individual cases would decrease to three (from 

six). As is the case now, the newly-consolidated case would continue to remain consolidated for 

pretrial purposes, just with all future deadlines proceeding under the schedule set forth in the XR2 

case, Dkt. 41 (Ex. B). Consolidation in the manner requested would also minimize the burden on 

the Court and potential jurors, as it would reduce the number of potential trials from six (i.e., one 

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 5 of 9 PageID #: 1131
for each Defendant in each of XR1 and XR2) to no more than three (i.e., one for each Defendant 

involving all six remaining patents-in-suit). 

The Parties respectfully request that the Court vacate the deadlines in the XR1 case and 

adopt the XR2 case schedule. To further reduce the burden on the Court and the Parties, the Parties 

have additionally reached the following agreements to apply upon consolidation. First, the Parties 

have agreed that any further claim construction proceedings (if any are required) will be limited to 

issues specific to the XR2 patents, and will not retread issues that were already addressed at the 

Markman Hearing on September 11, 2024 regarding the XR1 patents. 

Second, to ensure that all Parties continue to engage in the efficient and cooperative 

discovery procedures as evidenced to date, and to further ensure that the parties work to streamline 

the remaining claims and defenses in the most efficient manner possible, the Parties have agreed 

to reduce by a significant amount the discovery that would otherwise be called for under the current 

Discovery Orders in both cases. Specifically, the Parties have agreed that (i) all prior deposition 

transcripts of Plaintiff’s Rule 30(b)(6) witnesses, inventors, or prosecution counsel (including, 

without limitation, Mssrs. Chraplyvy, Hansen, Chaffee, Brennan, Eidson, and the various 

prosecution counsel deponents, including Mssrs. Haycox, Ambrose, Brooks, Schwedler, and 

Burke) can be used as if taken in this case; (ii) to the extent follow up depositions of the foregoing 

witnesses are necessary, they will be collectively limited to 14 hours and questioning will not 

repeat issues addressed in earlier depositions; and (iii) the limits in the Discovery Order in XR1 

will otherwise apply to the consolidated action. 

Additionally, the Parties further request that the Court add the following additional 

deadlines to the XR2 docket control order:

• Deadline by which the Parties are to serve all respective corporate and 

individual deposition notices; and 

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 6 of 9 PageID #: 1132
• Deadlines to narrow claims and prior art references after the close of fact 

discovery.

These modifications are intended to ensure that the cases continue to proceed in an orderly and 

efficient fashion. 

Overall, consolidation of the XR1 cases into the XR2 cases will serve to reduce the burden 

on the Parties and the Court and ensure that the entirety of the dispute proceeds together. A 

proposed schedule—i.e., the current XR2 case schedule, as modified to include these additional 

party-agreed interim deadlines—is attached hereto as Exhibit C. The requested consolidation is 

not intended to prejudice any Party’s right to later advocate for a particular timing, order, or 

grouping of trials for the individual cases. 

The Parties have conferred on this request, and they agree to the requested relief.

Dated: September 12, 2024

/s/ Reza Mirzaie 

Reza Mirzaie (CA SBN 246953)

rmirzaie@raklaw.com

Neil Rubin (CA SBN)

nrubin@raklaw.com

Paul A. Kroeger (CA SBN 229074)

pkroeger@raklaw.com

Philip X. Wang (CA SBN 262239)

pwang@raklaw.com

James N. Pickens (CA SBN 307474)

jpickens@raklaw.com

Adam Hoffman

ahoffman@raklaw.com

Jacob Buczko

jbuczko@raklaw.com

Minna Chan

mchan@raklaw.com

Christian Conkle

cconkle@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor

Los Angeles, CA 90025

Respectfully submitted,

/s/ Matthew S. Yungwirth

Melissa R. Smith (TBN 24001351)

GILLAM & SMITH, LLP

303 South Washington Avenue

Marshall, Texas 75670

Telephone: (903) 934-8450

Facsimile: (903) 934-9257

Deron R. Dacus (TBN 00790553) 

ddacus@dacusfirm.com 

THE DACUS FIRM, P.C. 

821 ESE Loop 323, Suite 430 

Tyler, Texas 75701 

Telephone: 903.705.1117 

Matthew S. Yungwirth

msyungwirth@duanemorris.com

Alice E. Snedeker

aesnedeker@duanemorris.com

John R. Gibson

jrgibson@duanemorris.com

DUANE MORRIS LLP

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 7 of 9 PageID #: 1133
Phone: (310) 826-7474

Counsel for Plaintiff XR Communications, LLC 

dba Vivato Technologies

1075 Peachtree Street NE

Suite 1700

Atlanta, Georgia 30309

Telephone: 404.253.6900

Facsimile: 404.253.6901

William A. Liddell

waliddell@duanemorris.com

DUANE MORRIS LLP

2801 Via Fortuna

Suite 200

Austin, Texas 78746-7567

Telephone: (512) 277-2272

Facsimile: (512) 227-2301

Tyler Marandola

tmarandola@duanemorris.com

DUANE MORRIS LLP

30 S. 17th Street

Philadelphia, PA 19103

Telephone: (215) 979-1000

Elissa Sanford

esanford@duanemorris.com

DUANE MORRIS LLP

901 New York Avenue NW

Suite 700 East

Washington, D.C. 20001-4795

Telephone: (202) 776-5231

Counsel for Defendants / Intervenors

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 8 of 9 PageID #: 1134
CERTIFICATE OF CONFERENCE

I hereby certify that counsel complied with the requirements of Eastern District of Texas 

Local Rule CV-7(h). The parties are in agreement on filing the Joint Motion.

/s/ Reza Mirzaie

CERTIFICATE OF SERVICE

I hereby certify that all counsel of record who are deemed to have consented to electronic 

service are being served on September 12, 2024, with a copy of this document via the Court’s 

CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be served by 

electronic mail on this same date.

/s/ Reza Mirzaie

Case 2:23-cv-00470-JRG-RSP Document 53 Filed 09/12/24 Page 9 of 9 PageID #: 1135