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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 1 of 22 PageID #: 1000



IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE











v.

Plaintiff,

CYBERFONE SYSTEMS, LLC (formerly
known as LVL PATENT GROUP, LLC),





FEDERAL EXPRESS CORPORATION;
UNITED PARCEL SERVICE, INC.; DHL
EXPRESS (USA), INC.; MOTOROLA
SOLUTIONS, INC. ; GARMIN USA, INC.;
MITAC DIGITAL CORPORATION;
VERIFONE SYSTEMS, INC.; HYPERCOM
CORPORATION; HYPERCOM U.S.A.,
INC.; EQUINOX PAYMENTS, LLC;
INGENICO CORP.; INGENICO INC.;
FIRST DATA CORPORATION; DELTA
AIR LINES, INC.; UNITED AIR LINES,
INC.; SOUTHWEST AIRLINES CO.;
AMERICAN AIRLINES, INC.; US
AIRWAYS, INC.; AIR CANADA;
AIRTRAN AIRWAYS, INC.; JETBLUE
AIRWAYS CORPORATION; MARRIOTT
INTERNATIONAL, INC.; STARWOOD
HOTELS & RESORTS WORLDWIDE,
INC.; INTER-CONTINENTAL HOTELS
CORPORATION; HYATT CORPORATION;
HILTON WORLDWIDE, INC.;
AMAZON.COM, INC.; PANDIGITAL,
INC.; BARNES & NOBLE, INC.; SONY
ELECTRONICS INC.; AND NINTENDO OF
AMERICA INC.,



Defendants.





C.A. No. 11-834 (SLR)

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THE MOVING DEFENDANTS’ REPLY BRIEF IN SUPPORT OF THEIR MOTION

FOR MISJOINDER PURSUANT TO RULES 20 AND 21

February 9, 2012




Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 2 of 22 PageID #: 1001



TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ...................................................................................................... ii

I.

II.

INTRODUCTION ............................................................................................... 1

ARGUMENT ....................................................................................................... 3

A.

B.

C.

Any Right to Relief Against the Moving Defendants Did
Not Arise Out of The Same Transaction Or Occurrence ............................ 3

The AIA Applies to this Dispute Because the FAC Does
Not Relate Back to the Original Complaint ............................................... 6

The Most Efficient Arrangement of Defendants Is Not the
Twenty-Two Actions CyberFone Has Created .......................................... 9

III.

CONCLUSION .................................................................................................. 10



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CASES

TABLE OF AUTHORITIES

Page(s)

Brandywine Commc’ns Techs., LLC v. Apple, Inc.,

C.A. No. 11-1512-Orl-36KRS, (M.D. Fla. Jan. 24, 2012) ...................................................... 4

Braud v. Transp. Serv. Co. of Ill.,

445 F.3d 801 (5th Cir. 2006) ............................................................................................. 7, 8

Codex Corp. v. Milgo Elec. Corp.,

553 F.2d 735 (1st Cir. 1977) ................................................................................................ 10

DirecTV, Inc. v. Leto,

437 F.3d 842 (3d Cir. 2006) .................................................................................................. 3

Farina v. Nokia, Inc.,

625 F.3d 97 (3d Cir. 2010) ................................................................................................ 7, 8

Hagan v. Rogers,

570 F.3d 146 (3d Cir. 2009) .................................................................................................. 4

MicroUnity Sys. Eng’g, Inc. v. Acer Inc.,

No. 2:10-CV-91-TJW-CE, 2011 WL 4591917 (E.D. Tex. Sept. 30, 2011) ............................. 6

MyMail, Ltd. v. Am. Online, Inc.,

223 F.R.D. 455 (E.D. Tex. 2004) .......................................................................................... 6

Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce, Fenner & Smith, Inc.,

564 F. Supp. 1358 (D. Del. 1983) .......................................................................................... 3

Philips Elecs. N. Am. Corp. v. Contec Corp.,

220 F.R.D. 415 (D. Del. 2004) .............................................................................................. 3

Prime Care of Ne. Kan., LLC v. Humana Ins. Co.,

447 F.3d 1284 (10th Cir. 2006).............................................................................................. 8

Rudd v. Lux Prods. Corp.,

C.A. No. 09-6957, 2011 WL 148052 (N.D. Ill. Jan. 12, 2011) ............................................... 4

Schiavone v. Fortune,

477 U.S. 21 (1986) ................................................................................................................ 7

Softview LLC v. Apple Inc.,

C.A. No. 10-389-LPS, 2011 U.S. Dist. LEXIS 112476, 2011 WL 4571793
(D. Del. Sep. 30, 2011) .......................................................................................................... 5

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Sony Elecs., Inc. v. Orion IP, LLC,

C.A. No. 05-255-GMS, 2006 WL 680657 (D. Del. Mar. 14, 2006) ...................................... 10

SRI Int’l, Inc. v. Internet Security Sys., Inc.,

C.A. No. 04-1199-SLR, 2005 U.S. Dist. LEXIS 6797 (D. Del. Apr. 13, 2005) .................. 4, 5

United States v. Martinez,

195 U.S. 469 (1904) .............................................................................................................. 8

Wacoh Co. v. Kionix, Inc.,

C.A. No. 10-617-RGA, 2012 WL 70673 (D. Del. Jan. 9, 2012) ............................................. 3

RULES AND STATUTES

Fed. R. Civ. P. 8 .......................................................................................................................... 9

Fed. R. Civ. P. 15 .................................................................................................................... 7, 8

Fed. R. Civ. P. 20 ................................................................................................................ 2, 3, 5

OTHER AUTHORITIES

H.R. REP. No. 112-98, pt. 1 (2011) ............................................................................................. 5



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I.

INTRODUCTION

In opposing Moving Defendants’ motion for misjoinder, CyberFone Systems, LLC

(“CyberFone”) claims that “the primary purpose of permissive joinder is ‘to promote trial

convenience and expedite the final determination of disputes, thereby preventing multiple

lawsuits.’” (D.I. 144 at 3). Yet CyberFone itself initially filed nine separate actions against

more than 150 defendants on five related patents, and then brought thirteen additional actions on

one of those same five patents.1 In short, CyberFone always sought the “duplicity” that it now

claims would be a waste of resources, including “conduct[ing] multiple claim construction

hearings,” and “review[ing] parallel briefs on common issues in multiple cases.” (Id. at 8).

Those arguments ring hollow.

Nowhere in its answering brief does CyberFone even attempt to defend the particular

arrangement of defendants in the 11-834 action, which spans more than twenty different

defendants involved in a host of unrelated businesses, including package delivery, electronic

payment processing, navigation systems, e-book readers, airlines, hotels, and gaming systems.

Indeed, CyberFone never discusses the individual defendants’ products and services, or even

their industries, in its answering brief. (D.I. 144). Instead, CyberFone states broadly that joinder

is appropriate because the defendants’ “products function similarly to one another’s products for

infringement purposes.” (Id. at 7). CyberFone, however, fails to identify any similarities among

the more than 70 products accused in this action. Indeed the only similarity that CyberFone

actually alleges among the defendants and their products is the patents in suit. That is not the


1

On January 30, 2012, CyberFone brought thirteen separate actions asserting infringement
of the ‘060 patent: one against each of the unrelated defendants already a party in the 11-
828 action. These actions are C.A. No. 12-107 and 12-109 through 12-120.

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law of joinder. Although Rule 20 permits joinder of unrelated defendants when the facts show

that a common transaction or occurrence links all the defendants, alleged infringement of the

same patents—and the things that necessarily follow therefrom—without more, simply does not

satisfy this standard.

Moreover CyberFone’s arguments for joinder apply equally to the defendants across all

the separate actions. CyberFone already expressed its preference for severance by filing nine

original actions—six of which involve at least one of the patents asserted in this case.

CyberFone then filed thirteen additional actions against each of the remaining defendants in the

11-828 action, asserting the ‘060 patent, which is already asserted in three of these cases.

Coordination across the actions is already required to avoid duplication of effort, and

CyberFone’s arrangement of defendants does not help. Nowhere does CyberFone explain why it

gets to decide how to slice and dice 150 separate companies with hundreds of different products

across many industries into twenty-two actions, where neither the defendants nor the Court have

any say in the matter. Nor does it acknowledge that the Court retains the discretion to coordinate

pretrial proceedings across separate actions so as to reduce any burden to the Court, or that any

difficulties caused by severance are a problem of its own making—a natural consequence of

having sued over 150 defendants.

There is no reason to force the inclusion of otherwise uninterested parties into disputes

simply because CyberFone chose to lump them together in a particular action.2 Separation


2

There is no inherent reason, for example, why two separate Motorola entities are accused
of selling the same products in two separate actions, why the ‘024 patent is asserted only
against Apple in the 11-827 action when the same claims are the only ones asserted in 11-
832, or why the same patents are asserted in different actions.

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solves this problem and reduces the number of parties before the Court for any given issue to

only those parties with an interest in that dispute.3

II.

ARGUMENT

A.

Any Right to Relief Against the Moving Defendants Did
Not Arise Out of The Same Transaction Or Occurrence

As discussed in the Moving Defendants’ Opening Brief, Rule 20 has two distinct tests,

both of which must be satisfied to permit joinder, and the failure of either results in the

misjoinder of the parties. DirecTV, Inc. v. Leto, 437 F.3d 842, 844 (3d Cir. 2006) (“Misjoinder

. . . occurs when there is no common question of law or fact or when, as here, the events that give

rise to the plaintiff’s claims against defendants do not stem from the same transaction.”); Philips

Elecs. N. Am. Corp. v. Contec Corp., 220 F.R.D. 415, 417 (D. Del. 2004) (citing Paine, Webber,

Jackson & Curtis, Inc. v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 564 F. Supp. 1358, 1370

(D. Del. 1983) (“In order to permit joinder, both tests must be satisfied.”)); Wacoh Co. v. Kionix,

Inc., C.A. No. 10-617-RGA, 2012 WL 70673, at *1 (D. Del. Jan. 9, 2012) (“there are two

conditions that need to be met for joinder of defendants”).

CyberFone claims that the “common ‘series of transaction or occurrences’ prong of Rule

20(a) is satisfied . . . when products of different defendants function similarly for infringement

purposes.” (D.I. 144 at 6). Even accepting their standard arguendo, CyberFone contends only

that “the Moving Defendants’ products function similarly to one another’s products for

infringement purposes” (id. at 7), which is no different from contending that they infringe the


3

Separating the actions, for example, does not preclude the Court and the parties from
coordinating proceedings as appropriate, such as by asserted patents or accused products.

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same patent.4 Yet CyberFone does not even attempt to explain what, other than the asserted

patent, is “similar” among the more than 70 accused products across a host of different

industries. Instead, CyberFone merely asserts a tautology. Because the “functionality accused in

each of those products is similar” . . . “[t]here will therefore be common issues of fact and law

relating to the architecture and functionality of the accused products.”5 (D.I. 144 at 7).

CyberFone also does not explain its decision to separate this action from the 11-827 and 11-830

actions—both involving the same three patents asserted here, or its decision to separate this

action from the 11-828, 11-833, and 11-835 actions, which all also involve the ‘382 patent.

Moreover, the Delaware cases CyberFone cites are distinguishable from this action. For

example, SRI Int’l, Inc. v. Internet Security Sys., Inc., C.A. No. 04-1199-SLR, 2005 U.S. Dist.

LEXIS 6797 (D. Del. Apr. 13, 2005), does not support CyberFone’s position. In SRI, which was

decided well before the AIA, the plaintiff alleged infringement by only two defendants in the


4

the same

requirement and make[]

transaction or occurrence

Construing alleged infringement of common patents as sufficient for joinder would
“eviscerate[]
it
indistinguishable from the requirement that there be a common question of law or fact.”
Brandywine Commc’ns Techs., LLC v. Apple, Inc., C.A. No. 11-1512-Orl-36KRS, slip
op. at 4 n.2 (M.D. Fla. Jan. 24, 2012) (quoting Rudd v. Lux Prods. Corp., C.A. No. 09-
6957, 2011 WL 148052, at *2-3 (N.D. Ill. Jan. 12, 2011)) (Ex. A). Even in CyberFone’s
cited case, eSpeed, Inc. v. BrokerTec, USA, LLC, Judge Jordan explicitly held
“[i]nfringement of the same patent by different machines and parties does not constitute
the same transaction or occurrence to justify joinder.” C.A. No. 03-612-KAJ, 2004 U.S.
Dist. LEXIS 13486, at *10 n.9 (D. Del. June 15, 2004) (emphasis added) (cited by
CyberFone in D.I. 144 at 3). CyberFone’s joinder arguments are improperly based on
“general assumptions” and not “based on the specific fact pattern presented by the
plaintiff[].” Hagan v. Rogers, 570 F.3d 146, 157 (3d Cir. 2009)

5

CyberFone raises other purported commonalities with respect to the “common issues of
fact and law” element, such as “conception and reduction to practice of the asserted
patents, claim construction level of skill in the art, and relevance of prior art.” (Id.). All
of these so-called commonalities, however, necessarily arise from the assertion of
common patents, and do not relate to the requirement that the “right to relief . . . ar[ose]
out of the same transaction, occurrence, or series of transactions or occurrences.”
Congress has recently confirmed with the passage of the AIA that the mere assertion of a
common patent is an insufficient basis for joinder.

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very narrow field of “computer network protection systems.” Id. at *11. This is more than a

common patent alone, and more than CyberFone alleges in response to Moving Defendants’

motion.

CyberFone also cites Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, 2011 U.S. Dist.

LEXIS 112476, at *1-3, 2011 WL 4571793, at *1 (D. Del. Sep. 30, 2011), arguing that the Court

“granted the motion over defendants’ objection that there would be jury confusion.” (D.I. 77 at

3-4). In fact, Judge Stark explicitly reserved on the question of severance at trial. Softview, 2011

WL 4571793, at *1 (“Under the circumstances, it would be premature for the Court to decide the

issue of separate trials”). Leave to amend was granted because the defendants’ objections “about

jury confusion” were “premature” and therefore “d[id] not present a sufficient reason to deny

Softview leave to amend.” Id. The issue of pre-trial joinder is not yet settled in Softview, as the

new defendants have now sought severance in separate motions, which are currently pending.

(C.A. No. 10-389 D.I. 143, 148, 153, 156, 185).

CyberFone also tries to downplay the import of the AIA by suggesting that this Court

should disregard the AIA merely because this action was filed an hour before its enactment.

(D.I. 144 at 5). Not so. The AIA represents Congress’s intent to “abrogate[] the construction of

Rule 20(a) adopted in MyMail . . . Sprint Communications Co. v. Theglobe.com, Inc. . . . Alford

Safety Services, Inc. v. Hot-Hed, Inc. . . . –effectively conforming these courts’ jurisprudence to

that followed by a majority of jurisdictions.” H.R. REP. No. 112-98, pt. 1, at 55 n.61 (2011)

(emphasis added). Although CyberFone tries to pass these words off as arguments by Moving

Defendants, they are not—they are Congress’s own words. The cases Moving Defendants cite

do not “represent only one side of the pre-AIA judicial divide on joinder” (D.I. 144 at 7); they

represent the Congressionally-approved, and now mandated, judicial interpretation of Rule 20 in

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patent actions.6 CyberFone’s arguments for joinder of any defendant—based on general

statements in non-patent cases that “the impulse is towards entertaining the broadest scope of

action,” and that “joinder of claims, parties and remedies is strongly encouraged” (D.I. 144 at

3)—simply ignore that Congress reached the exact contrary conclusion in the AIA.

B.

The AIA Applies to this Dispute Because the FAC Does
Not Relate Back to the Original Complaint

CyberFone does not contest that joinder would be improper under the AIA, but instead

claims that the AIA is inapplicable because “this case was filed before the adoption of [the

AIA].” (D.I. 144 at 1). There can be no dispute, however, that CyberFone filed the FAC well

after the enactment of the AIA. It is telling that CyberFone chose only to collaterally attack the

Moving Defendants’ arguments rather than presenting any evidence that the FAC should, in fact,

relate back. Even CyberFone’s collateral attacks fail, and CyberFone should not be allowed to

simply “tack on” whatever new allegations to its original Complaint without regard to the

applicability of the AIA.

First, CyberFone’s contention that the Moving Defendants “waive[d]” the argument that

the FAC does not relate back to the original Complaint is without merit. (D.I. 144 at 11).


6

Indeed, other than the one District of Kansas opinion CyberFone now cites, the MyMail
line of cases have been cited approvingly almost exclusively within the Fifth Circuit.
The opinions Moving Defendants have cited in this and their Opening Brief (D.I. 106 at
10-14), on the other hand, reflect decisions in patent cases from the Second, Third,
Fourth, Seventh, Eighth, Ninth, and Eleventh Circuits. Even the MyMail line of cases
that CyberFone cites from the Fifth Circuit are much different than this one. In MyMail,
Ltd. v. Am. Online, Inc., the Court noted that the defendants “shared resources, such as
dial-up Internet access numbers.” 223 F.R.D. 455, 457 (E.D. Tex. 2004). Similarly, in
MicroUnity Sys. Eng’g, Inc. v. Acer Inc., No. 2:10-CV-91-TJW-CE, 2011 WL 4591917,
at *3 (E.D. Tex. Sept. 30, 2011), the Court noted that the accused products all used the
same component (the ARM architecture and instruction set). CyberFone has made not a
single allegation that there is any such connection between the defendants or their
products.

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Although not their burden to do so, the Opening Brief’s discussion on pp. 14-15, 17-18 more

than adequately sets forth Moving Defendants’ position that the FAC did not relate back to the

original Complaint under Rule 15, especially for the defendants that were added without

apparent or alleged connection to the original defendants or allegations.

Next, CyberFone contends that “many of the Moving Defendants seeking this relief . . .

are not even the newly-added defendants.” (D.I. 144 at 8) This is irrelevant as two of the four

new parties do join in this motion.7 Moreover, the Farina court determined that the CAFA, on

which federal subject matter jurisdiction was based, applied to all defendants, and not just the

newly added ones. Farina v. Nokia, Inc., 625 F.3d 97, 114-15 (3d Cir. 2010) (“Federal

jurisdiction over Farina’s suit arose on December 23, 2005, when the Second Amended

Complaint commenced a new civil action [by including two new defendants] and brought the

case under CAFA.”).

CyberFone then argues that Farina is inapplicable because 1) Farina addressed the Fifth

Circuit’s “Braud approach” to relation back, which relies upon Supreme Court precedent from

1932 and 1904, before the enactment of the Federal Rules,8 and 2) “it relies for the


7

The time to respond for newly added defendants Motorola Solutions, Inc. and Equinox
Payments, LLC, had not yet passed when Moving Defendants filed the Motion. Since
then, Motorola Solutions, Inc. and Equinox Payments, LLC, have joined in the motion.
(D.I. 134, 141.) In addition, newly added defendant Hyatt Corporation has filed its own
separate Motion to Dismiss Based on Misjoinder or In the Alternative to Sever and
Transfer The Claims. (D.I. 138.)

8

CyberFone’s reliance on Schiavone v. Fortune, 477 U.S. 21, 24 (1986), is particularly
confusing. In Schiavone, the Supreme Court held that an amended complaint did not
relate back to an earlier filed complaint where the statute of limitations had expired
between the original and amended complaints, even though the originally named
defendant, Fortune, was a division of the party plaintiff Schiavone sought to add, Time.
If anything, Schiavone supports the Moving Defendants’ position that relation back is not
appropriate.

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commencement definition on Pennsylvania law.” (D.I. 144 at 9). As an initial matter,

CyberFone’s suggestion that the Fifth Circuit ignored the Rules of Civil Procedure in its 2006

Braud decision because it relied on pre-Rules Supreme Court precedent is plainly wrong. In

fact, the Braud court explicitly considered the import of Fed. R. Civ. P. 15(c)(3). Braud v.

Transp. Serv. Co. of Ill., 445 F.3d 801, 806-07 (5th Cir. 2006). Moreover, the Farina court only

applied Pennsylvania law after considering relation back precedent from the First, Fifth, Sixth,

Seventh, Eighth, Ninth and Tenth Circuits. 625 F.3d at 111-13. It further traced the origins of

its holding that “[g]enerally ‘a party brought into court by an amendment, and who has, for the

first time, an opportunity to make defense to the action, has a right to treat the proceeding, as to

him, as commenced by the process which brings him into court,’” to Federal, not Pennsylvania,

law. Id. at 111 (quoting Braud, 445 F.3d at 805 (quoting United States v. Martinez, 195 U.S.

469, 473 (1904)). And although CyberFone claims that Farina “do[es] not dispose of the issue

here” (D.I. 144 at 8), the Third Circuit in Farina considered exactly the question of how to

determine whether a complaint filed before the enactment of a statute, but amended after

enactment, “commenced” before or after the statute. Id. at 111-13. CyberFone’s attempt to

completely ignore the effect of amending its Complaint is precisely what concerned the Farina

court, which stated:

[T]he unqualified disregard of any post-[Act] pleading amendments ... entails the
practically untenable result that once a pre-[Act] case is filed, the plaintiff can
tack on new causes of action so substantively independent of the original case that
they would be properly treated as filed after [Act]'s effective date for all legal
purposes ... except for [the Act].

Id. at 111 (quoting approvingly Prime Care of Ne. Kan., LLC v. Humana Ins. Co., 447 F.3d

1284, 1288 n.4 (10th Cir. 2006)).

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Finally, CyberFone simply ignores the Moving Defendants’ point that “CyberFone’s

original thread-bare eleventh hour complaint to avoid the express misjoinder provisions of the

AIA was facially defective because it, for most if not all of the defendants, failed to satisfy even

the liberal pleading requirements of Fed. R. Civ. P. 8(a).” (D.I. 144 at 18) Indeed, CyberFone

amended its original Complaint to identify products before the Defendants could respond—but

even this was well after the enactment of the AIA. CyberFone’s bare original Complaint, filed at

the literal eleventh hour, should not allow it to circumvent Congress’s intent for the AIA, when

even CyberFone acknowledged further detail was necessary.

C.

The Most Efficient Arrangement of Defendants Is Not
the Twenty-Two Actions CyberFone Has Created

Joinder is also an inefficient use of the Court’s, and the parties’, resources. CyberFone

argues that separating the Moving Defendants in this action would result in a parade of horribles

for the Court, claiming that separation will “increase the burden on the Court.” (D.I. 144 at 8).

What CyberFone neglects to mention, however, is that it has already chosen to inflict these very

things upon the Court (and the defendants) by filing twenty-two separate actions against more

than 150 defendants. If, as CyberFone suggests in its brief, the Court must hold a separate

Markman hearing for each action, the Court is already faced with twenty-two hearings on the

same five patents, six hearings including the patents in this action. The same can also be said for

every argument that CyberFone makes about waste or inefficiency in its opposition to the

defendants’ motion. CyberFone’s arguments are simply an attempt to misdirect blame for the

burden it forced upon this Court when it filed these actions.

In evaluating efficiency, therefore, the question is not one case or several, but instead

how the several cases should be arranged. Indeed, CyberFone does not dispute the Moving

Defendants’ arguments that they will be prejudiced at trial, but instead claims that “[s]everance

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for trial can be considered close to trial . . . .” (D.I. 144 at 8). Delaying until trial, however, does

not serve efficiency with the multi-action nature of this case. As Chief Judge Sleet held,

“[a]lthough there may be some efficiency to be gained by consolidating certain aspects of

discovery, [plaintiff] ignores the possibility that collateral issues specific to any one of the many

unrelated parties involved in both cases may create inefficiencies that would not arise if the

proceedings remained separate.” Sony Elecs., Inc. v. Orion IP, LLC, C.A. No. 05-255-GMS,

2006 WL 680657, at *2 (D. Del. Mar. 14, 2006) (citing Codex Corp. v. Milgo Elec. Corp., 553

F.2d 735, 739 (1st Cir. 1977)). The Court is already faced with overlapping, but separate,

actions that eliminate the potential efficiency of a single action. To the extent that efficiency can

be gained before trial, it is by narrowing disputes and issues to only the interested parties—not

by lumping disparate defendants together in a single action.9 Separate actions leave the Court

and the parties free to choose the parties with whom to coordinate on any given issue, and will

prevent a dispute among a limited number of parties from engulfing otherwise uninterested

parties merely by virtue of being part of the same action.

III. CONCLUSION

For the foregoing reasons, and the reasons stated in their Opening Brief, the Moving

Defendants respectfully request that the Court dismiss them from this case, or in the alternative,

sever the claims against them from the other defendants.


9

CyberFone’s January 30, 2012 addition of thirteen lawsuits—one against each unrelated
defendant in the 11-828 action—that alleged infringement of one of the same five patents
further illustrates why joint actions are inappropriate. As facts and contentions are
revealed throughout discovery, new issues that will likely be specific to some, but not all,
defendants will be uncovered. Rather than rearranging the actions whenever a new issue
is discovered, as CyberFone attempted to do on January 30 and which has the potential to
add additional rounds of motion practice, separate actions can be coordinated as
appropriate on each issue.

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MORRIS, NICHOLS, ARSHT & TUNNELL LLP



MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Paul Saindon
Jack B. Blumenfeld (#1014)
Karen Jacobs Louden (#2881)
Paul Saindon (#5110)
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899
(302) 658-9200
[email protected]
[email protected]
[email protected]

Attorneys
Verifone Systems, Inc.

OF COUNSEL:

Owen W. Dukelow
KOLISCH HARTWELL, P.C.
520 S.W. Yamhill Street
200 Pacific Building
Portland, Oregon 97204
(503) 224-6655



for Hypercom Corporation and

/s/ Paul Saindon
Jack B. Blumenfeld (#1014)
Karen Jacobs Louden (#2881)
Paul Saindon (#5110)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
[email protected]
[email protected]

Attorneys for US Airways, Inc., Air Canada
and United Air Lines, Inc.

OF COUNSEL:

Stephen Baskin
KILPATRICK TOWNSEND & STOCKTON LLP
Suite 900
607 14th Street, N.W
Washington, DC, 20005-2018
(202) 508-5899

John Alemanni
Michael T. Morlock
KILPATRICK TOWNSEND & STOCKTON LLP
1001 West Fourth Street
Winston-Salem, NC 27101
(336) 607-7300


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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 16 of 22 PageID #: 1015


MORRIS, NICHOLS, ARSHT & TUNNELL LLP

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Paul Saindon
Jack B. Blumenfeld (#1014)
Karen Jacobs Louden (#2881)
Paul Saindon (#5110)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
[email protected]
[email protected]

Attorneys for Defendant Hilton Worldwide,
Inc.

/s/ Paul Saindon
Jack B. Blumenfeld (#1014)
Karen Jacobs Louden (#2881)
Paul Saindon (#5110)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
[email protected]
[email protected]

Attorneys for Inter-Continental Hotels Corp.

OF COUNSEL:

George L. Murphy, Jr.
Vaibhav P. Kadaba
KILPATRICK TOWNSEND & STOCKTON LLP
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
(404) 815-6500

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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 17 of 22 PageID #: 1016


MORRIS, NICHOLS, ARSHT & TUNNELL LLP

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Paul Saindon
Jack B. Blumenfeld (#1014)
Karen Jacobs Louden (#2881)
Paul Saindon (#5110)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
[email protected]
[email protected]

Attorneys for Ingenico Corp., Ingenico Inc.
and United Parcel Service, Inc.

OF COUNSEL:

John Fry
Kelly L. Whitehart
MORRIS, MANNING & MARTIN, LLP
1600 Atlanta Financial Center
3343 Peachtree Road, NE
Atlanta, GA 30326, USA


/s/ Paul Saindon
Jack B. Blumenfeld (#1014)
Karen Jacobs Louden (#2881)
Paul Saindon (#5110)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
[email protected]
[email protected]

Attorneys for Motorola Solutions Inc.

OF COUNSEL:

Michael L. Brody
Jonathan E. Retsky
Thomas M. Williams
James Winn
WINSTON & STRAWN LLP
35 West Wacker Drive
Chicago, IL 60601

Krishnan Padmanabhan
WINSTON & STRAWN LLP
200 Park Avenue
New York, NY 10166-4193
(212) 294-6700


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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 18 of 22 PageID #: 1017


MORRIS, NICHOLS, ARSHT & TUNNELL LLP

FISH & RICHARDSON, P.C.

/s/ Rodger D. Smith II
Rodger D. Smith II (#3778)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]

Attorneys for Defendant Sony Electronics, Inc.

OF COUNSEL:

Charles Steenburg
Michael Rader
James J. Foster
WOLF, GREENFIELD & SACKS P.C.
600 Atlantic Avenue
Boston, MA 02210

RATNERPRESTIA

/s/ Rex A. Donnelly
Rex A. Donnelly (#3492)
1007 Orange Street, Suite 1100
Wilmington, DE 19801
(302) 778-2500
[email protected]

Attorneys for Equinox Payments, LLC

OF COUNSEL:

M. Elizabeth Day
Marc C. Belloli
Sal Lim
FEINBERG DAY ALBERTI & THOMPSON LLP
401 Florence Street, Suite 200
Palo Alto, CA 94301
(650) 618-4360

/s/ Lauren M. Pringle
Lauren M. Pringle (#5375)
222 Delaware Avenue, 17th Floor
P.O. Box 1114
Wilmington, DE 19899-1114
(302) 778-8474
[email protected]

Attorney for Defendants Federal Express
Corp. and Barnes & Noble, Inc.

RATNERPRESTIA

/s/ Rex A. Donnelly
Rex A. Donnelly (#3492)
1007 Orange Street, Suite 1100
Wilmington, DE 19801
(302) 778-2500
[email protected]

Attorneys for Pandigital, Inc.

OF COUNSEL:

James P. Martin
Lisa Stockholm
SHARTSIS FRIESE LLP
One Maritime Plaza, 18th Floor
San Francisco, CA 94111
(415) 421-6500

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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 19 of 22 PageID #: 1018


POTTER ANDERSON & CORROON LLP

RICHARDS, LAYTON & FINGER, P.A.

/s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
(302) 984-6000
[email protected]
[email protected]

Attorneys for Amazon.com, Inc.

OF COUNSEL:

J. David Hadden
Darren E. Donnelly
Saina S. Shamilov
FENWICK & WEST LLP
801 California Street
Mountain View, CA 94041
(650) 988-8500

Ryan J. Marton
FENWICK & WEST LLP
555 California Street, 12th
San Francisco, CA 94104
(415) 875-2300


Floor

/s/ Kelly E. Farnan
Allen Terrell, Jr. (#937)
Kelly E. Farnan (#4395)
One Rodney Square
920 N. King Street
Wilmington, DE 19801
(302) 651-7700
[email protected]
[email protected]

Attorneys for Southwest Airlines Co. and
AirTran Airways Inc.



OF COUNSEL:

Max Ciccarelli
Justin S. Cohen
THOMPSON & KNIGHT LLP
One Arts Plaza
1722 Routh St., Suite 1500
Dallas, TX 75201
(214) 969-1700


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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 20 of 22 PageID #: 1019


DLA PIPER LLP (US)

RICHARDS, LAYTON & FINGER, P.A.

/s/ Aleine Porterfield
Denise S. Kraft (#2778)
Aleine Porterfield (#5053)
919 N. Market Street, Suite 1500
Wilmington, DE 19801
(302) 468-5645
[email protected]
[email protected]

Attorneys for Starwood Hotels & Resorts
Worldwide Inc.

OF COUNSEL:

John Guaragna
Brian Erickson
Aaron Fountain
DLA PIPER LLP (US)
401 Congress Avenue
Suite 2500
Austin, TX 78701-3799

/s/ Anne Shea Gaza
Frederick L. Cottrell, III (#2555)
Anne Shea Gaza (#4093)
Travis S. Hunter (#5350)
One Rodney Square
920 N. King Street
Wilmington, DE 19801
(302) 651-7700
[email protected]
[email protected]
[email protected]

Attorneys for Marriott International, Inc.



OF COUNSEL:

Brian M. Koide
John L. Cuddihy
CROWELL & MORING LLP
1001 Pennsylvania Avenue, NW
Washington, DC 20004-2595
(202) 624-2500


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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 21 of 22 PageID #: 1020


POTTER ANDERSON & CORROON LLP

POTTER ANDERSON & CORROON LLP

/s/ Philip A. Rovner
Philip A. Rovner (#3215)
Jonathan A. Choa (#5319)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19899
Tel: (302) 984-6000
[email protected]
[email protected]

Attorneys for Defendant First Data
Corporation

OF COUNSEL:

Bobbie Wilson
PERKINS COIE LLP
Four Embarcadero Center, Suite 2400
San Francisco, CA 94111
(415) 344-7000

Christopher Kao
PERKINS COIE LLP
3150 Porter Drive
Palo Alto, CA 94304
(650) 838-4300


/s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19899
(302) 984-6000
[email protected]
[email protected]

Attorneys for Nintendo of America Inc.

OF COUNSEL:

Timothy S. Teter
Benjamin G. Damstedt
COOLEY LLP
Five Palo Alto Square
3000 El Camino Real
Palo Alto, CA 94306
(650) 843-5000



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Case 1:11-cv-00834-SLR Document 151 Filed 02/09/12 Page 22 of 22 PageID #: 1021


GREENBERG TRAURIG, LLP

ASHBY & GEDDES

/s/ Eve H. Ormerod
Gregory E. Stuhlman (#4765)
Eve H. Ormerod (#5369)
1007 North Orange Street, Suite 1200
Wilmington, DE 19801
(302) 661-7000
[email protected]
[email protected]

Attorneys for Defendant DHL Express (USA),
Inc.

OF COUNSEL:

Michael A. Nicodema
GREENBERG TRAURIG, LLP
200 Park Avenue
Florham Park, NJ 07932
(973) 360-7932

Kimberly A. Warshawsky
GREENBERG TRAURIG, LLP
2375 E. Camelback Rd., Suite 700
Phoenix, AZ 85016
(602) 445-8566



February 9, 2012


/s/ John G. Day
John G. Day (#2403)
Tiffany Geyer Lydon (#3950)
Andrew C. Mayo (#5207)
500 Delaware Avenue, 8th Floor
P.O. Box 1150
Wilmington, DE 19899
(302) 654-1888
[email protected]
[email protected]
[email protected]

Attorneys for Defendant JetBlue Airways
Corporation

OF COUNSEL:

Jordan A. Sigale
LOEB & LOEB LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654





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