Free Case Transferred In - District Transfer - District Court of Delaware - Delaware

Case 1:06-cv-00737-SLR

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DISCMAG, JURY, PATENT

U.S. District Court [LIVE] Eastern District of TEXAS LIVE (Marshall) CIVIL DOCKET FOR CASE #: 2:06-cv-00239-RHC Internal Use Only

USA Video Technology Corporation v. Time Warner, Inc., et al Assigned to: Judge Ron Clark Cause: 35:271 Patent Infringement Plaintiff USA Video Technology Corporation

Date Filed: 06/13/2006 Jury Demand: Both Nature of Suit: 830 Patent Jurisdiction: Federal Question

represented by Edward W Goldstein Goldstein Faucett & Prebeg 1177 West Loop South Suite 400 Houston, TX 77027 713/877-1515 Fax: 713/877-1145 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Thomas John Ward, Jr Law Office of T John Ward Jr PC P O Box 1231 Longview, TX 75606-1231 903/757-6400 Fax: 19037572323 Email: [email protected] ATTORNEY TO BE NOTICED

V. Defendant Time Warner, Inc., represented by J Thad Heartfield Law Offices of J. Thad Heartfield 2195 Dowlen Rd Beaumont, TX 77706 409/866-3318 Fax: 14098665789 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Jeffrey M Olson Sidley Austin - Los Angeles

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555 West Fifth Street, 40th Floor Los Angeles, Ca 90013 213/896-6000 Fax: 213/896-6600 Email: [email protected] ATTORNEY TO BE NOTICED Defendant Cox Communications, Inc., represented by Candice C Decaire Kilpatrick Stockton LLP - Atlanta 1100 Peachtree St Ste 2800 Atlanta, GA 30309-4530 404/815-6033 Fax: 404/541-3218 Email: [email protected] ATTORNEY TO BE NOTICED Leroy M Toliver Kilpatrick Stockton 1100 Peachtree St Suite 2800 Atlanta, GA 30309 404/815-6483 Fax: 404/541-3274 Email: [email protected] ATTORNEY TO BE NOTICED Michael Edwin Jones Potter Minton PC 110 N College Suite 500 PO Box 359 Tyler, TX 75710-0359 903/597/8311 Fax: 9035930846 Email: [email protected] ATTORNEY TO BE NOTICED Mitchell G Stockwell Kilpatrick Stockton LLP 1100 Peachtree St Ste 2800 Atlanta, GA 30309-4530 404/815-6214 Fax: 14048156555 Email: [email protected]

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ATTORNEY TO BE NOTICED Tonya R Deem Kilpatrick Stockton LLP NC 1001 W Fourth Street Winston-Salem, NC 27101 336/607-7485 Fax: 13367342653 Email: [email protected] ATTORNEY TO BE NOTICED Defendant Charter Communications, Inc., represented by Dean Franklin Thompson Coburn - St Louis One US Bank Plaza 27th Floor St Louis, MO 63101 314-552-6038 Fax: 314-552-7038 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Harry Lee Gillam, Jr Gillam & Smith, LLP 303 South Washington Avenue Marshall, TX 75670 US 903-934-8450 Fax: 903-934-9257 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Matthew A Rosenberg Thompson Coburn - St Louis One US Bank Plaza 27th Floor St Louis, MO 63101 314-552-6007 Fax: 314-552-7007 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Melissa Richards Smith Gillam & Smith, LLP 303 South Washington Avenue

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Marshall, TX 75670 US 903/934-8450 Fax: 903/934-9257 Email: [email protected] ATTORNEY TO BE NOTICED Michael Joseph Truncale Orgain Bell & Tucker - Beaumont 470 Orleans St. Beaumont, TX 77701-3075 409-838-6412 Fax: 14098386959 Email: [email protected] ATTORNEY TO BE NOTICED Nicholas B Clifford, Jr Thompson Coburn - St Louis One US Bank Plaza 27th Floor St Louis, MO 63101 314/552-6136 Fax: 314-552-7136 Email: [email protected] ATTORNEY TO BE NOTICED Defendant Comcast Cable Communications, LLC., represented by Harry Lee Gillam, Jr (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Duane Nash Davis Polk & Wardwell - Menlo Park 1600 El Camino Real Menlo Park, CA 94025 US 650/752-2000 Fax: 650/752-2111 Email: [email protected] ATTORNEY TO BE NOTICED Matthew B Lehr Davis Polk & Wardwell - Menlo Park 1600 El Camino Real Menlo Park, CA 94025 US 650/752-2000 Fax: 650/752-2111

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Email: [email protected] ATTORNEY TO BE NOTICED Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED Suong Nguyen Davis Polk & Wardwell - Menlo Park 1600 El Camino Real Menlo Park, CA 94025 US 650/752-2000 Fax: 650/752-2111 Email: [email protected] ATTORNEY TO BE NOTICED Yiping Liao Davis Polk & Wardwell - Menlo Park 1600 El Camino Real Menlo Park, CA 94025 US 650/752-2000 Fax: 650/752-2111 Email: [email protected] ATTORNEY TO BE NOTICED Defendant Comcast of Richardson, LP. represented by Harry Lee Gillam, Jr (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Duane Nash (See above for address) ATTORNEY TO BE NOTICED Matthew B Lehr (See above for address) ATTORNEY TO BE NOTICED Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED Suong Nguyen (See above for address) ATTORNEY TO BE NOTICED Yiping Liao

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(See above for address) ATTORNEY TO BE NOTICED Defendant Comcast of Plano, LP., represented by Harry Lee Gillam, Jr (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Duane Nash (See above for address) ATTORNEY TO BE NOTICED Matthew B Lehr (See above for address) ATTORNEY TO BE NOTICED Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED Suong Nguyen (See above for address) ATTORNEY TO BE NOTICED Yiping Liao (See above for address) ATTORNEY TO BE NOTICED Defendant Comcast of Dallas, LP., represented by Harry Lee Gillam, Jr (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Duane Nash (See above for address) ATTORNEY TO BE NOTICED Matthew B Lehr (See above for address) ATTORNEY TO BE NOTICED Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED Suong Nguyen (See above for address) ATTORNEY TO BE NOTICED

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Yiping Liao (See above for address) ATTORNEY TO BE NOTICED Counter Claimant Comcast of Dallas, LP., represented by Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED

Counter Claimant Comcast Cable Communications, LLC., Counter Claimant Comcast of Richardson, LP. represented by Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED represented by Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED

Counter Claimant Comcast of Plano, LP., represented by Michael Joseph Truncale (See above for address) ATTORNEY TO BE NOTICED

V. Counter Defendant USA Video Technology Corporation Counter Claimant Charter Communications, Inc., V. Counter Defendant USA Video Technology Corporation

Date Filed 06/13/2006

#

Docket Text 1 ORGINAL COMPLAINT JURY TRIAL DEMAND against Comcast of Dallas, LP.,, Time Warner, Inc.,, Cox Communications, Inc.,, Charter Communications, Inc.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP., (Filing fee $ 350.) , filed by USA Video Technology Corporation. (Attachments: # 1 Civil Cover Sheet)(ch, ) (Entered: 06/13/2006) Summons Issued as to Comcast of Dallas, LP.,, Time Warner, Inc.,, Cox

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Communications, Inc.,, Charter Communications, Inc.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (ch, ) (Entered: 06/13/2006) 06/13/2006 06/15/2006 2 Form mailed to Commissioner of Patents and Trademarks. (ch, ) (Entered: 06/13/2006) 3 NOTICE of Attorney Appearance by Thomas John Ward, Jr on behalf of USA Video Technology Corporation (Ward, Thomas) (Entered: 06/15/2006) 4 ORDER REASSIGNING CASE. Case reassigned to Judge Ron Clark for all further proceedings. Judge David Folsom no longer assigned to case. Signed by Judge David Folsom on 6/16/06. (mrm, ) (Entered: 06/16/2006) 6 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Comcast Cable Communications, LLC., served on 6/26/2006, answer due 7/17/2006. (ch, ) (Entered: 07/11/2006) 7 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Charter Communications, Inc., served on 6/26/2006, answer due 7/17/2006. (ch, ) (Entered: 07/11/2006) 8 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Cox Communications, Inc., served on 6/26/2006, answer due 7/17/2006. (ch, ) (Entered: 07/11/2006) 9 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Comcast of Dallas, LP., served on 6/27/2006, answer due 7/17/2006. (ch, ) (Entered: 07/11/2006) 10 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Comcast of Plano, LP., served on 6/27/2006, answer due 7/17/2006. (ch, ) (Entered: 07/12/2006) 11 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Comcast of Richardson, LP. served on 6/27/2006, answer due 7/17/2006. (ch, ) (Entered: 07/12/2006) 5 MOTION for Extension of Time to File Answer re 1 Complaint, Defendant's Cox Communications, Inc., Charter Communications, Inc. Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP and Comcast of Dallas, LP's Unopposed Motion to Enlarge Time to Answer or Otherwise Respond to USA Video Technology Corporation's Original Complaint by Comcast Cable Communications, LLC.,. (Attachments: # 1 Text of Proposed Order)(Gillam, Harry) (Entered: 07/10/2006) 12 ORDER granting 5 Motion for Extension of Time to Answer. Deadline for Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP and Comcast of Dallas, LP is set for August 14, 2006. Signed

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by Judge Ron Clark on 7/19/06. (ehs, ) (Entered: 07/20/2006) 07/20/2006 13 Answer Due Deadline Updated for Comcast of Dallas, LP., to 8/14/2006; Cox Communications, Inc., to 8/14/2006; Charter Communications, Inc., to 8/14/2006; Comcast Cable Communications, LLC., to 8/14/2006; Comcast of Richardson, LP. to 8/14/2006; Comcast of Plano, LP., to 8/14/2006. (ehs, ) (Entered: 07/20/2006) 15 APPLICATION to Appear Pro Hac Vice by Attorney Leroy M Toliver for Cox Communications, Inc.. (ch, ) (Entered: 08/07/2006) Pro Hac Vice Filing fee paid by Toliver; Fee: $25, receipt number: 6-16092 (ch, ) (Entered: 08/07/2006) 16 APPLICATION to Appear Pro Hac Vice by Attorney Mitchell G Stockwell for Cox Communications, Inc.. (ch, ) (Entered: 08/07/2006) Pro Hac Vice Filing fee paid by Stockwell; Fee: $25, receipt number: 21-1729 (ch, ) (Entered: 08/07/2006) 14 NOTICE of Attorney Appearance by Michael Edwin Jones on behalf of Cox Communications, Inc., (Jones, Michael) (Entered: 08/04/2006) 17 APPLICATION to Appear Pro Hac Vice by Attorney Candice C Decaire for Cox Communications, Inc.. (ch, ) (Entered: 08/10/2006) Pro Hac Vice Filing fee paid by Decaire; Fee: $25, receipt number: 2-11764 (ch, ) (Entered: 08/10/2006) 18 MOTION to Change Venue by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Attachments: # 1 Affidavit Declaration of S. Nguyen in Support of Comcast Defendants' Motion to Transfer# 2 Exhibit Exhibit A to Nguyen Declaration# 3 Exhibit Exhibit B to Nguyen Declaration# 4 Exhibit Exhibit C to Nguyen Declaration# 5 Exhibit Exhibit D to Nguyen Declaration# 6 Exhibit Exhibit E to Nguyen Declaration# 7 Exhibit Exhibit F to Nguyen Declaration# 8 Exhibit Exhibit G to Nguyen Declaration# 9 Exhibit Exhibit H to Nguyen Declaration# 10 Text of Proposed Order Proposed Order)(Gillam, Harry) (Entered: 08/11/2006) 19 APPLICATION to Appear Pro Hac Vice by Attorney Matthew B Lehr for Cox Communications, Inc.,; Charter Communications, Inc.,; Comcast Cable Communications, LLC.,; Comcast of Richardson, LP.; Comcast of Plano, LP.,; Comcast of Dallas, LP., and Time Warner, Inc.. (ch, ) (Entered: 08/11/2006) Pro Hac Vice Filing fee paid by Lehr; Fee: $25, receipt number: 2-1-1779 (ch, ) (Entered: 08/11/2006) 20 APPLICATION to Appear Pro Hac Vice by Attorney Yiping Liao for Cox Communications, Inc.,; Charter Communications, Inc.,; Comcast Cable Communications, LLC.,; Comcast of Richardson, LP.; Comcast of Plano, LP.,; Comcast of Dallas, LP., and Time Warner, Inc.. (ch, ) (Entered: 08/11/2006)

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Pro Hac Vice Filing fee paid by Liao; Fee: $25, receipt number: 2-1-1179 (ch, ) (Entered: 08/11/2006) 21 APPLICATION to Appear Pro Hac Vice by Attorney Duane Nash for Cox Communications, Inc.,; Charter Communications, Inc.,; Comcast Cable Communications, LLC.,; Comcast of Richardson, LP.; Comcast of Plano, LP.,; Comcast of Dallas, LP., and Time Warner, Inc.. (ch, ) (Entered: 08/11/2006) Pro Hac Vice Filing fee paid by Nash; Fee: $25, receipt number: 2-11779 (ch, ) (Entered: 08/11/2006) 22 APPLICATION to Appear Pro Hac Vice by Attorney Suong Nguyen for Cox Communications, Inc.,; Charter Communications, Inc.,; Comcast Cable Communications, LLC.,; Comcast of Richardson, LP.; Comcast of Plano, LP.,; Comcast of Dallas, LP., and Time Warner, Inc.. (ch, ) (Entered: 08/11/2006) Pro Hac Vice Filing fee paid by Nguyen; Fee: $25, receipt number: 2-11779 (ch, ) (Entered: 08/11/2006) 23 MOTION to Amend/Correct 19 Application to Appear Pro Hac, Matthew B. Lehr by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Liao, Yiping) (Entered: 08/11/2006) 24 MOTION to Amend/Correct 22 Application to Appear Pro Hac, Suong Nguyen by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Liao, Yiping) (Entered: 08/11/2006) 25 MOTION to Amend/Correct 21 Application to Appear Pro Hac, Duane Nash by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Liao, Yiping) (Entered: 08/11/2006) 26 MOTION to Amend/Correct 20 Application to Appear Pro Hac, Yiping Liao by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Liao, Yiping) (Entered: 08/11/2006) ***Motions terminated: 23 MOTION to Amend/Correct 19 Application to Appear Pro Hac, Matthew B. Lehr filed by Comcast Cable Communications, LLC.,,, Comcast of Richardson, LP.,, Comcast of Plano, LP.,,, Comcast of Dallas, LP.,,, 24 MOTION to Amend/Correct 22 Application to Appear Pro Hac, Suong Nguyen filed by Comcast Cable Communications, LLC.,,, Comcast of Richardson, LP.,, Comcast of Plano, LP.,,, Comcast of Dallas, LP.,,, 25 MOTION to Amend/Correct 21 Application to Appear Pro Hac, Duane Nash filed by Comcast Cable Communications, LLC.,,, Comcast of Richardson, LP.,, Comcast of Plano, LP.,,, Comcast of Dallas, LP.,,, 26 MOTION to Amend/Correct 20 Application to Appear Pro Hac, Yiping Liao filed by Comcast Cable Communications, LLC.,,, Comcast of Richardson, LP.,, Comcast of

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Plano, LP.,,, Comcast of Dallas, LP.,,. These are not motions, just amended applications to appear Pro Hac Vice. (mpv, ) (Entered: 08/14/2006) 08/14/2006 27 MOTION for Extension of Time to File Defendants' Comcast Cable COmmunications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP and Comcast of Dallas, LP's Unopposed Motion to Enlarge Time to Answer or Otherwise Respond to USA Video Technology Corporation's Original Complaint by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Attachments: # 1 Text of Proposed Order)(Smith, Melissa) (Entered: 08/14/2006) 28 MOTION for Joinder Joinder in Motion to Transfer by Charter Communications, Inc.,. (Smith, Melissa) (Entered: 08/14/2006) 29 MOTION for Extension of Time to File Defendant Charter Communications, Inc.'s Unopposed Motion to Enlarge Time to Answer or Otherwise Respond to USA Video Technology Corporation's Original Complaint by Charter Communications, Inc.,. (Attachments: # 1 Text of Proposed Order)(Smith, Melissa) (Entered: 08/14/2006) 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof by Cox Communications, Inc.,. Responses due by 8/29/2006 (Attachments: # 1 Exhibit A - Spalding Declaration# 2 Exhibit B Complaint# 3 Exhibit C - Order# 4 Text of Proposed Order Granting Motion to Dismiss for Lack of Personal Jurisdiction# 5 Text of Proposed Order Granting Motion to Transfer to the State of Delaware)(Stockwell, Mitchell) (Entered: 08/14/2006) ***Motions terminated: 28 MOTION for Joinder Joinder in Motion to Transfer filed by Charter Communications, Inc.,,. Document is not a motion. (mpv, ) (Entered: 08/15/2006) 31 ORDER granting 29 Motion for Extension of Time to File to answer or otherwise respond to USA Video Technology corp's original comnplaint until 8/21/06. Signed by Judge Ron Clark on 8/15/06. (djh, ) (Entered: 08/15/2006) 32 ORDER granting 27 Dfts comcast Cable Communications,LLC, Comcast of Richardson, LP, Comcast of Plano, LP and Comcast of Dallas, LP Unopposed motion to enlarge time to answer or otherwise respond to USA Video Technology Corp's original complaint until 8/21/06. Signed by Judge Ron Clark on 8/15/06. (djh, ) (Entered: 08/15/2006) 33 NOTICE by Cox Communications, Inc., re 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof re: Notice of Errata (Attachments: # 1 Exhibit A to Notice of Errata)(Stockwell, Mitchell) (Entered: 08/16/2006) 34 AMENDED COMPLAINT against all defendants, filed by USA Video

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Technology Corporation. (Attachments: # 1 Exhibit A USP 5130792) (Goldstein, Edward) (Entered: 08/18/2006) 08/21/2006 08/22/2006 Summons Issued as to Time Warner, Inc.,. (ch, ) (Entered: 08/21/2006) 35 RESPONSE to Motion re 18 MOTION to Change Venue to the District Court of Delaware, or, in the Alternative, to Stay the Action filed by USA Video Technology Corporation. (Goldstein, Edward) (Entered: 08/22/2006) 36 NOTICE of Attorney Appearance by Matthew A Rosenberg on behalf of Charter Communications, Inc., (Rosenberg, Matthew) (Entered: 08/25/2006) 41 E-GOV SEALED SUMMONS Returned Executed Certified Mail by USA Video Technology Corporation. Time Warner, Inc., served on 8/22/2006, answer due 9/11/2006. (ch, ) (Entered: 08/29/2006) 37 NOTICE of Attorney Appearance by Dean Franklin on behalf of Charter Communications, Inc., (Franklin, Dean) (Entered: 08/28/2006) 38 NOTICE of Attorney Appearance by Nicholas B Clifford, Jr on behalf of Charter Communications, Inc., (Clifford, Nicholas) (Entered: 08/28/2006) 39 RESPONSE in Opposition re 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof filed by USA Video Technology Corporation. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D)(Goldstein, Edward) (Entered: 08/28/2006) 40 REFERRAL ORDER - that discovery disputes and discovery motions filed in this case shall be REFERRED, to United States Magistrate Judge Earl S. Hines. Signed by Judge Ron Clark on 8/28/06. (ehs, ) (Entered: 08/29/2006) 42 MOTION to Amend/Correct 34 Amended Complaint by USA Video Technology Corporation. (Attachments: # 1 Exhibit A-Second Amended Complaint# 2 Text of Proposed Order)(Goldstein, Edward) (Entered: 08/29/2006) 43 PROTECTIVE ORDER as set forth herein. Signed by Judge Ron Clark on 8/29/06. (ehs, ) (Entered: 08/30/2006) 44 ORDER Governing Proceedings (Patent Cases) setting case for Management Conference. Management Conference set for 10/31/2006 02:00 PM before Judge Ron Clark.. Signed by Judge Ron Clark on 8/29/06. (ehs, ) (Entered: 08/30/2006) 45 ORDER denying 18 Motion to Transfer to the District of Delaware or, in the Alternative, to Stay the Action. It is further ordered that Dft Charter Communication, Inc., Joinder in the Motion to Transfer 28 is Denied . Signed by Judge Ron Clark on 8/31/06. (ch, ) (Entered: 08/31/2006)

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46 MOTION for Extension of Time to File Response/Reply as to 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof by Cox Communications, Inc.,. (Attachments: # 1 Text of Proposed Order Granting Defendant Cox Communications Inc.'s Motion for Extension of Time)(Decaire, Candice) (Entered: 09/01/2006) 47 MOTION for Extension of Time to File Answer or Otherwise Respond to USA Video Technology Corporation's Amended Complaint by Comcast of Dallas, LP.,, Charter Communications, Inc.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,. (Attachments: # 1 Text of Proposed Order)(Gillam, Harry) (Entered: 09/05/2006) 48 ORDER granting 46 Motion for Extension of Time to File reply to pltf's response to deft's motion to dismiss for lack of personal jurisdiction, or in the alternative, to transfer venue. Responses due by 9/6/2006. Signed by Judge Ron Clark on 9/6/06. (ehs, ) (Entered: 09/06/2006) 49 REPLY to Response to Motion re 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof filed by Cox Communications, Inc.,. (Attachments: # 1 Exhibit D# 2 Exhibit E# 3 Exhibit F# 4 Exhibit G# 5 Exhibit H)(Decaire, Candice) (Entered: 09/06/2006) 50 MOTION for Extension of Time to File Answer re 34 Amended Complaint by Time Warner, Inc.,. (Attachments: # 1 Proposed Order) (Heartfield, J) (Entered: 09/07/2006) 51 ORDER denying 50 Motion for Extension of Time to Answer. Defts have until 9/13/06 to file a responsive pleading . Signed by Judge Ron Clark on 9/8/9/06. (ehs, ) (Entered: 09/08/2006) 52 ORDER denying 47 Motion for Extension of Time to File. Defts have until 9/13/06 to file a responsive pleading . Signed by Judge Ron Clark on 9/8/06. (ehs, ) (Entered: 09/08/2006) 53 ORDER that deft Cox Communications, Inc. make the Rule 30(b)(6) representatives available for deposition by 10/6/06. Pltfs have until 10/20/06 to supplement its response or deft Cox Comm. will be dismissed from this case for lack of personal jurisdiction. Signed by Judge Ron Clark on 9/8/06. (ehs, ) (Entered: 09/08/2006) 58 APPLICATION to Appear Pro Hac Vice by Attorney Jeffrey M Olson for Time Warner, Inc.. (ch, ) (Entered: 09/25/2006) Pro Hac Vice Filing fee paid by Olson; Fee: $25, receipt number: 2-11851 (ch, ) (Entered: 09/25/2006) 54 ANSWER to Amended Complaint by Time Warner, Inc.,.(Heartfield, J) (Entered: 09/13/2006) 55 The Comcast Defendants' ANSWER to Amended Complaint Affirmative Defenses and, COUNTERCLAIM against USA Video Technology

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Corporation by Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,.(Gillam, Harry) (Entered: 09/13/2006) 09/13/2006 56 ANSWER to Amended Complaint, COUNTERCLAIM against USA Video Technology Corporation by Charter Communications, Inc.,. (Clifford, Nicholas) (Entered: 09/13/2006) 57 NOTICE: Case Management Conference Reset for 11/1/2006 01:30 PM in Ctrm 2 (Beaumont) before Judge Ron Clark. (bca, ) (Entered: 09/20/2006) 59 Plaintiff's ANSWER to Counterclaim of Comcast Defendants by USA Video Technology Corporation.(Goldstein, Edward) (Entered: 09/27/2006) 60 Plaintiff's ANSWER to Counterclaim of Charter Communications by USA Video Technology Corporation.(Goldstein, Edward) (Entered: 09/27/2006) 61 NOTICE of Attorney Appearance by Michael Joseph Truncale on behalf of Comcast of Dallas, LP.,, Comcast of Dallas, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP.,, Comcast Cable Communications, LLC.,, Comcast of Richardson, LP., Comcast of Plano, LP., (Truncale, Michael) (Entered: 10/02/2006) 62 REPORT of Rule 26(f) Planning Meeting. (Attachments: # 1Attachment A; Proposed Order)(Truncale, Michael) Modified on 10/3/2006 (mpv, ). (Entered: 10/02/2006) 63 REPORT of Rule 26(f) Planning Meeting. (Attachments: # 1 Exhibit AProtective Order)(Goldstein, Edward) (Entered: 10/02/2006) 64 REPORT of Rule 26(f) Planning Meeting. (Attachments: # 1 Protective Order)(Truncale, Michael) (Entered: 10/03/2006) 65 PROTECTIVE ORDER. Signed by Judge Ron Clark on 10/3/06. (ch, ) (Entered: 10/11/2006) 66 RESPONSE in Opposition re 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof Supplemental Response filed by USA Video Technology Corporation. (Attachments: # 1 Exhibit A Letter# 2 Exhibit B - Deposition Transcript excerpts)(Goldstein, Edward) (Entered: 10/20/2006) 67 RESPONSE in Support re 30 MOTION to Dismiss for Lack of Jurisdiction or in the Alternative, to Transfer Venue to the District of Delaware and Brief in Support Thereof filed by Cox Communications, Inc.,. (Attachments: # 1 Exhibit 1)(Jones, Michael) (Entered: 10/23/2006) 68 CORPORATE DISCLOSURE STATEMENT filed by Cox Communications, Inc., identifying Cox Enterprises, Inc. as Corporate Parent. (Toliver, Leroy) (Entered: 10/24/2006)

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69 CORPORATE DISCLOSURE STATEMENT filed by Comcast Cable Communications, LLC., identifying Comcast Holdings Corporation as Corporate Parent. (Truncale, Michael) (Entered: 10/27/2006) 76 APPLICATION to Appear Pro Hac Vice by Attorney Tonya R Deem for Cox Communications, Inc.. (ch, ) (Entered: 11/15/2006) Pro Hac Vice Filing fee paid by Deem; Fee: $25, receipt number: 1-13129 (ch, ) (Entered: 11/15/2006) 70 CORPORATE DISCLOSURE STATEMENT filed by Time Warner, Inc., (Heartfield, J) (Entered: 10/31/2006) 71 ORDER granting in part 30 Motion to Dismiss for Lack of Personal Jurisdiction or in the alternative transfer venue to the District Court of Delaware. USA Video Techology's claims against Cox Communications, Inc are severed and transferred to the U S District Court of Delaware. The Clerk shall send a copy of this Order to the Clerk of the U S District Court for the District of Delaware. The Court denies 42 Motion to for leave to amend. Signed by Judge Ron Clark on 11/1/06. (djh, ) (Entered: 11/02/2006) 73 Minute Entry for proceedings held before Judge Ron Clark : Case Management Conference held on 11/1/2006 in Beaumont. Jury selection & trial set for February, 2008. (Court Reporter Chris Bickham.) (bca, ) (Entered: 11/07/2006) 72 SCHEDULING ORDER - Discovery due by 11/28/2007. Joinder of Parties due by 12/6/2006.Claims Construction Hearing set for 8/29/2007 10:00 AM before Judge Ron Clark. Motions due by 1/7/2008. Docket Call and Final Pretrial set for 2/4/2008 9:00 AM before Judge Ron Clark. Jury Selection set for 2/5/2008 9:00AM before Judge Ron Clark. All other deadlines are set forth herein. Signed by Judge Ron Clark on 11/1/06. (ch, ) (Entered: 11/02/2006) 74 AMENDED SCHEDULING ORDER - Mandatory disclosures due 12/20/06, Invalidity contentions due 12/28/06. All other deadlines and requirements remain unchanged and are governed by the original scheduling order #72. Signed by Judge Ron Clark on 11/7/06. (ehs, ) (Entered: 11/07/2006) 75 NOTICE of Attorney Appearance by Michael Joseph Truncale on behalf of Charter Communications, Inc., (Truncale, Michael) (Entered: 11/10/2006) Interdistrict transfer to the District of Delaware. USA Video Tech claims against Cox Communications, Inc. are severed and transferred to the Dist. of Delaware. Certified copies of transfer order, complaint/answer and docket sheet emailed to to Dist of Delaware. (ehs, ) (Entered: 11/21/2006)

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA Video Technology Corporation, Plaintiff V. TIME WARNER INC.; COX COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, INC.; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST OF RICHARDSON, LP; COMCAST OF PLANO, LP; COMCAST OF DALLAS, LP § § § § § § § § § § § § §

CIVIL ACTION NO. 2:06-CV-239-DF

NOTICE OF APPEARANCE OF T. JOHN WARD, JR. COMES NOW Plaintiff, USA Video Technology Corporation, and hereby notifies the court and all parties of record that, in addition to the attorneys already representing it, T. John Ward, Jr., State Bar Number 00794818, of Law Office of T. John Ward, Jr., P.C., P.O. Box 1231, Longview, Texas, 75606-1231, (903) 757-6400, will be appearing as an attorney of record on its behalf in the above-styled and numbered cause. Respectfully submitted,

/s/ John Ward, Jr. T. John Ward, Jr. State Bar No. 00794818 Law Office of T. John Ward, Jr., P.C. P.O. Box 1231 Longview, Texas 75606-1231 (903) 757-6400 (telephone) (903) 757-2323 (facsimile) E-mail: [email protected]

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CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the foregoing document was served by e-mail via the Eastern District of Texas ECF System to all counsel of record on this the 15th day of June, 2006.

/s/ John Ward, Jr. T. John Ward, Jr.

NOTICE OF APPEARANCE OF T. JOHN WARD, JR.

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORP., Plaintiff, v. TIME WARNER, INC., ET AL., Defendants. § § § § § CIVIL ACTION NO. 2:06-CV-239 § § § ORDER The above entitled and numbered civil action is hereby reassigned to the Honorable Ron Clark. SIGNED this 16th day of June, 2006.

____________________________________ DAVID FOLSOM UNITED STATES DISTRICT JUDGE

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORPORATION, Plaintiff v TIME WARNER INC.; COX COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, INC; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST OF RICHARDSON, LP; COMCAST OF PLANO, LP; COMCAST OF DALLAS, LP, Defendants § § § § § § § § § § § § § § § §

CASE NO. 2:06CV239(DF)

JURY TRIAL DEMANDED

DEFENDANT'S COX COMMUNICATIONS, INC., CHARTER COMMUNICATIONS, INC., COMCAST CABLE COMMUNICATIONS, LLC, COMCAST OF RICHARDSON, LP, COMCAST OF PLANO, LP AND COMCAST OF DALLAS LP'S UNOPPOSED MOTION TO ENLARGE TIME TO ANSWER OR OTHERWISE RESPOND TO USA VIDEO TECHNOLOGY CORPORATION'S ORIGINAL COMPLAINT TO THE HONORABLE JUDGE OF SAID COURT: 1. Defendant's Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP hereby move the Court to enlarge the time within which Defendants Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP are required to move, answer, or otherwise respond to Plaintiff USA Video Technology Corporation's Original Complaint up to and including August 14, 2006.

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2. Good cause exists for the granting of this motion and the motion is made for the reason and on the grounds that the additional time is necessary in order to allow counsel to adequately confer with their clients and respond appropriately to USA Video Technology Corporation's Original Complaint.

WHEREFORE, Defendant's Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP hereby move the Court to enlarge the time within which Defendants Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP pray respectfully that the time to answer or otherwise move or respond to USA Video Technology Corporation's Original Complaint be enlarged up to and including August 14, 2006.

Respectfully submitted, GILLAM & SMITH, L.L.P.

______/s/__________________ Harry L. "Gil" Gillam, Jr. Texas State Bar No. 07921800 GILLAM & SMITH, L.L.P. 303 South Washington Avenue Marshall, Texas 75670 Telephone: (903) 934-8450 Facsimile: (903) 934-9257 Lead Attorney for Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP

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CERTIFICATE OF CONFERENCE The undersigned hereby certifies that counsel for Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP and counsel for USA Video Technology Corporation conferred and USA Video Technology Corporation does not oppose this motion.

______/s/_____________________ Harry L. "Gil" Gillam, Jr.

CERTIFICATE OF SERVICE The undersigned hereby certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this motion was served on all counsel who have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R. Civ. P. 5(d) and Local Rule CV-5(e), all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this the 10th day of July 2006. _/s/___________________________ Harry L. "Gil" Gillam, Jr.

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORPORATION, Plaintiff v TIME WARNER INC.; COX COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, INC; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST OF RICHARDSON, LP; COMCAST OF PLANO, LP; COMCAST OF DALLAS, LP, Defendants § § § § § § § § § § § § § § § §

CASE NO. 2:06CV239(DF)

JURY TRIAL DEMANDED

ORDER GRANTING DEFENDANT'S COX COMMUNICATIONS, INC., CHARTER COMMUNICATIONS, INC., COMCAST CABLE COMMUNICATIONS, LLC, COMCAST OF RICHARDSON, LP, COMCAST OF PLANO, LP AND COMCAST OF DALLAS LP'S UNOPPOSED MOTION TO ENLARGE TIME TO ANSWER OR OTHERWISE RESPOND TO USA VIDEO TECHNOLOGY CORPORATION'S ORIGINAL COMPLAINT On this date came on for consideration, Defendants, Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP Unopposed Motion to Enlarge Time to Answer or Otherwise Respond to USA Video Technology Corporations Original Complaint, and the Court being of the opinion that same should be GRANTED, it is therefore,

ORDERED that Defendants, Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP, be and hereby are, granted an

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extension of time within which to respond to USA Video Technology Corporations Original Complaint up to and including August 14, 2006.

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORPORATION, Plaintiff v TIME WARNER INC.; COX COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, INC; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST OF RICHARDSON, LP; COMCAST OF PLANO, LP; COMCAST OF DALLAS, LP, Defendants § § § § § § § § § § § § § § § §

CASE NO. 2:06CV239(DF)

JURY TRIAL DEMANDED

ORDER GRANTING DEFENDANT'S COX COMMUNICATIONS, INC., CHARTER COMMUNICATIONS, INC., COMCAST CABLE COMMUNICATIONS, LLC, COMCAST OF RICHARDSON, LP, COMCAST OF PLANO, LP AND COMCAST OF DALLAS LP'S UNOPPOSED MOTION TO ENLARGE TIME TO ANSWER OR OTHERWISE RESPOND TO USA VIDEO TECHNOLOGY CORPORATION'S ORIGINAL COMPLAINT On this date came on for consideration, Defendants, Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP Unopposed Motion to Enlarge Time to Answer or Otherwise Respond to USA Video Technology Corporations Original Complaint, and the Court being of the opinion that same should be GRANTED. This extension of time shall not server as a basis for an extension of any other deadline. It is therefore, ORDERED that Defendants, Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP, be and hereby are, granted an

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extension of time within which to respond to USA Video Technology Corporations Original Complaint up to and including August 14, 2006. So ORDERED and SIGNED this 19 day of July, 2006.

___________________________________ Ron Clark, United States District Judge

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORPORATION, Plaintiff v TIME WARNER INC.; COX COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, INC; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST OF RICHARDSON, LP; COMCAST OF PLANO, LP; COMCAST OF DALLAS, LP, Defendants § § § § § § § § § § § § § § § §

CASE NO. 2:06CV239(DF)

JURY TRIAL DEMANDED

ORDER GRANTING DEFENDANT'S COX COMMUNICATIONS, INC., CHARTER COMMUNICATIONS, INC., COMCAST CABLE COMMUNICATIONS, LLC, COMCAST OF RICHARDSON, LP, COMCAST OF PLANO, LP AND COMCAST OF DALLAS LP'S UNOPPOSED MOTION TO ENLARGE TIME TO ANSWER OR OTHERWISE RESPOND TO USA VIDEO TECHNOLOGY CORPORATION'S ORIGINAL COMPLAINT On this date came on for consideration, Defendants, Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP Unopposed Motion to Enlarge Time to Answer or Otherwise Respond to USA Video Technology Corporations Original Complaint, and the Court being of the opinion that same should be GRANTED. This extension of time shall not server as a basis for an extension of any other deadline. It is therefore, ORDERED that Defendants, Cox Communications, Inc., Charter Communications, Inc., Comcast Cable Communications, LLC, Comcast of Richardson, LP, Comcast of Plano, LP, and Comcast of Dallas, LP, be and hereby are, granted an

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extension of time within which to respond to USA Video Technology Corporations Original Complaint up to and including August 14, 2006. So ORDERED and SIGNED this 19 day of July, 2006.

___________________________________ Ron Clark, United States District Judge

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA Video Technology Corporation, § § v. § § § TIME WARNER INC; COX § COMMUNICATIONS, INC.; CHARTER § COMMUNICATIONS, INC.; COMCAST § CABLE COMMUNICATIONS, LLC; § COMCAST OF RICHARDSON, LP; § COMCAST OF PLANO, LP; COMCAST § OF DALLAS, LP §

CIVIL ACTION NO. 2:06-cv-239(DF) JURY TRIAL DEMANDED

NOTICE OF APPEARANCE OF COUNSEL FOR DEFENDANT COX COMMUNICATIONS, INC.

Defendant COX COMMUNICATIONS, INC., (hereinafter "Cox"), files this its Notice of Appearance of Counsel, and hereby notifies the Court that Michael E. Jones of the law firm Potter Minton, A Professional Corporation, 110 N. College, Suite 500, Tyler, Texas 75702, is appearing as counsel for Cox in the above-referenced matter. All pleadings, discovery, correspondence and other material should be served upon counsel at the address referenced above. Respectfully submitted, POTTER MINTON A Professional Corporation 110 N. College, Suite 500 (75702) P. O. Box 359 Tyler, Texas 75710 (903) 597 8311 (903) 593 0846 (Facsimile) By: /s/ Michael E. Jones MICHAEL E. JONES State Bar No. 10929400 [email protected]

{A07\7617\0002\W0309077.1 }

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ATTORNEYS FOR DEFENDANT COX COMMUNICATIONS, INC.

CERTIFICATE OF SERVICE I hereby certify that all counsel of record who have consented to electronic service and are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV5(a)(3) on August 4, 2006. Any other counsel of record will be served by first class mail on this same date.

/s/ Michael E. Jones Michael E. Jones

___

{A07\7617\0002\W0309077.1 }

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UNITED STATES DISTRICT COURT FOR THE FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORPORATION, ) ) ) Plaintiff(s), ) ) v. ) ) TIME WARNER INC.; COX ) COMMUNICATIONS, INC.; CHARTER ) COMMUNICATIONS, INC.; COMCAST ) CABLE COMMUNICATIONS, LLC; ) COMCAST OF RICHARDSON, LP; ) COMCAST OF PLANO, LP; COMCAST OF ) DALLAS, LP, ) ) Defendant(s). ) ) ) )

Case No.: 2-06CV-239(RHC) JURY TRIAL DEMANDED

THE COMCAST DEFENDANTS MOTION TO TRANSFER TO THE DISTRICT OF DELAWARE PURSUANT TO 28 U.S.C. 1404(a) OR, IN THE ALTERNATIVE, TO STAY THE ACTION, AND BRIEF IN SUPPORT THEREOF Defendants Comcast Cable Communications, LLC; Comcast of Richardson, LP; Comcast of Plano, LP; and Comcast of Dallas, LP (collectively, the Comcast Defendants ) hereby move the Court pursuant to 28 U.S.C. Section 1404(a) to transfer this action from the United States District Court for the Eastern District of Texas to the United States District Court of Delaware (the Delaware District Court ), or, in the alternative, to stay this action pending resolution of related proceedings in Delaware. SUMMARY OF THE CASE This is an action for alleged infringement of U.S. Patent No. 5,130,792 (the 792 Patent ),

owned by plaintiff USA Video Technologies, Inc. ( Plaintiff or USA Video ). The 792 Patent is allegedly directed to systems that communicate video programs to subscribers upon request, commonly referred to as video-on-demand (VOD). Complaint ¶ 11. Only five days before filing this lawsuit against the Comcast Defendants, USA Video lost its appeal of a Delaware District Court decision which construed the term initiates in Claim 1 of the 792 Patent and granted
1

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summary judgment on non-infringement in favor of Movielink, a provider of VOD services. See USA Video Tech. Corp. v. Movielink LLC, 354 F. Supp. 2d 507 (D. Del. 2005), aff d 2006 U.S. App. LEXIS 14699 (Fed. Cir. June 7, 2006). Construction of Claim 1 of the 792 Patent, including the same language already construed against USA Video by the Delaware District Court, will be a central issue in this action. Rather than commence this action before the same Delaware District Court already familiar with the 792 Patent and the VOD technology at issue, USA Video instead chose a forum where none of the parties reside. None of the parties not even USA Video is organized under the laws of the State of Texas, but rather, under the laws of Connecticut (USA Video) and Delaware (all defendants). Nor do any of the parties, including USA Video, have a principal place of business in Texas.1 Indeed, USA Video has not operated in Texas since it shut down its Texas-based subsidiary in 1995. See Declaration of Suong Nguyen dated August 10, 2006 (the Nguyen Decl. ), at ¶ 11 and Ex. F. The only logical explanation for USA Video shunning the Delaware District court the

forum where USA Video itself chose to bring the Movielink action is a desire to escape the forum where the 792 Patent has already been construed and held inapplicable to typical contemporary VOD technology. This Court should not countenance Plaintiff s blatant attempt to forum shop. The Delaware District Court is already familiar with the 792 Patent, is proximate to where Plaintiff and most defendants reside, and is convenient for the parties and witnesses in this case. Plaintiff surely cannot complain of inconvenience in its own previously chosen forum for the same patent. Furthermore, the Delaware District Court currently has before it three separate actions filed by the Comcast Defendants and other defendants in this case seeking a declaratory judgment that the 792 Patent is not infringed, invalid and/or unenforceable (the Delaware Declaratory Judgment Actions ). For these reasons, and those set forth below, the Comcast Defendants respectfully request that this case be transferred to the Delaware District Court.
The Complaint alleges that USA Video is a Connecticut corporation, with its principal place of business ( ppb ) in Connecticut. The principal places of business of the defendants are alleged to be as follows: TimeWarner (New York); Cox (Georgia); Charter (Missouri); the Comcast Defendants (Pennsylvania or Delaware). See Complaint ¶¶ 1-8. As detailed here, all defendants are corporations organized under the laws of Delaware. 2
1

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 A. The Parties Involved 1.

UNDISPUTED MATERIAL FACTS

Plaintiff USA Video is a corporation organized under the laws of the State of

Connecticut with its principal place of business in Connecticut. See Complaint ¶ 1. 2. USA Video has purposefully availed itself of the Delaware District Court in

connection with the Movielink litigation involving the same patent at issue here. See USA Video Tech. Corp. v. Movielink LLC, 354 F. Supp. 2d 507 (D. Del. 2005), aff d 2006 U.S. App. LEXIS 14699 (Fed. Cir. June 7, 2006). 3. The Comcast Defendants, Defendant Cox Communications, Inc. ( Cox ), and

Defendant Charter Communications, Inc.( Charter ) are corporations organized under the laws of Delaware. See Complaint ¶¶ 3-8. 4. Defendant Time Warner, Inc. ( TimeWarner ) is also a corporation organized under

the laws of Delaware, see Nguyen Decl. Ex. G, although USA Video have mistakenly alleged that TimeWarner was incorporated in the state of New York. See Complaint ¶ 2. 5. None of the parties in this case reside in Texas, but instead, have principal places of

business in Connecticut (USA Video), New York (TimeWarner), Georgia (Cox), Missouri (Charter), Delaware or Philadelphia (the Comcast Defendants). See Complaint ¶¶ 1-8. B. Nature and Stage of Proceedings 1. USA Video filed this patent infringement action on June 13, 2006. The Complaint

alleges that Time Warner Inc. ( TimeWarner ), Cox Communications ( CoxCom ), Charter Communications ( Charter ) and the Comcast Defendants infringed Claim 1 of its 792 Patent by providing VOD services to their respective subscribers. See Complaint ¶¶ 14-20. 2. Cox, Charter and the Comcast Defendants are scheduled to respond to the complaint

on August 14, 2006. To date, TimeWarner has not been served with the complaint. No proceedings with respect to the case have occurred to date. See Nguyen Decl. at ¶ 2. C. The 792 Patent Litigation in the Delaware District Court 1. The 792 Patent has also been and is currently the subject of litigation in the

Delaware District Court before the Honorable Kent A. Jordan, the first of which was a patent
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infringement action commenced by USA Video against Movielink on April 10, 2003. See Nguyen Decl. at ¶ 3. After several years of discovery and a Markman hearing, Judge Jordan issued a decision on January 28, 2005 construing the term initiates in Claim 1 of the 792 Patent and granting summary judgment in favor of Movielink on non-infringement. See Nguyen Decl. Ex. A (attaching a copy of Judge Jordan s opinion in USA Video Tech. Corp. v. Movielink LLC, 354 F. Supp. 2d 507 (D. Del. 2005)). Specifically, Judge Jordan rejected USA Video s proposed construction of the claim term, and interpreted initiates to mean begins in the phrase wherein said distribution interface initiates connections over the telephone network with remote locations in response to requests received by said request interface ( 792 Patent, col. 7, ll. 52-56). See Movielink, 354 F. Supp. at 514. On the basis of that construction, Judge Jordan determined that Movielink did not infringe the 792 Patent because the user rather than the distribution interface as claimed initiates the connection which results in the transmission of the requested video six days before USA Video

program. See id., at 515-516, 519-520, 523. On June 7, 2006

commenced the instant action against the Comcast Defendants the Federal Circuit affirmed Judge Jordan s decision. See USA Video Tech. Corp. v. Movielink LLC, No. 05-1451, 2006 U.S. App. LEXIS 14699 (Fed. Cir. June 7, 2006) (attached as Exhibit B to the Nguyen Declaration). 2. Notably, in connection with the Movielink litigation, USA Video opposed

Movielink s motion to transfer the action to California, repeatedly stressing the convenience and suitability of litigating the 792 Patent in the Delaware District Court: USVO is litigating near its residence [of Connecticut], and noting in particular USA Video s limited resources in litigating outside of Delaware. See Nguyen Decl. Ex. C (Plaintiff USA Video Technology Corporation s Answering Brief in Opposition to Defendant Movielink s Motion to Transfer ( USA Video Delaware Brief ), at 10-11). USVO s principal place of business is located in Connecticut. We are a very small operation: we have four full-time employees, including the two senior executive officers, one technology and one administrative employee. Two of the employees reside in Connecticut . . . and two reside in Vancouver, Canada. See Nguyen Decl. Ex. D (Declaration of Edwin Molina in Support of Plaintiff USA Video Technology Corp. s Answering Brief in Opposition to Defendant Movielink, LLC s Motion to Transfer, at ¶ 3).\ USA Video has also observed that the Delaware District Court is particularly conversant with patent cases. See Nguyen Decl. Ex. C (USA Video Delaware Brief at 7) (citing cases that note that Delaware courts have substantial experience with patent infringement claims).
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 This Court has authority to transfer any civil action to any other district where it might have 26 been brought [f]or the convenience of parties and witnesses, in the interest of justice. 28 U.S.C. 27 § 1404(a). The purpose of Section 1404(a) is to prevent the waste of time, energy, and money and 28
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On January 9, 2004, Judge Jordan entered an Order denying Movielink s Motion to Transfer. 3. Judge Jordan is also presiding over three separate actions seeking a declaratory

judgment for non-infringement, invalidity and/or unenforceability of the 792 Patent. See TimeWarner Cable, Inc. v. USA Video Tech. Corp., No. 1:06-cv-00387 KAJ (D. Del.) (declaratory judgment action filed on June 15, 2006); CoxCom, Inc. v. USA Video Tech. Corp., No. 1:06-cv00394 KAJ (D. Del.) (declaratory judgment action filed on June 19, 2006); Comcast Cable Commc ns, LLC et al. v. USA Video Tech. Corp., No. 1:06-cv-00407 KAJ (D. Del.) (declaratory judgment action filed on June 27, 2006). USA Video answered and asserted counterclaims in each of the declaratory judgment actions on August 10, 2006. See Nguyen Decl. ¶ 10. On that same date, USA Video also filed motions to dismiss, stay or transfer in those actions. See Nguyen Decl. ¶ 10. ISSUES PRESENTED This Court is presented with the issue of whether to transfer this action pursuant to 28 U.S.C. § 1404(a) from this forum, where none of the parties in this case reside or are incorporated, to the Delaware District Court, where all defendants are incorporated and where Judge Jordan has for several years presided over a patent infringement lawsuit brought by Plaintiff related to the same patent at issue and is currently presiding over several declaratory judgment suits also involving the same patent. If this Court declines to transfer this case, this Court is presented with the issue of whether to stay this action pending the declaratory judgment suits in the Delaware District Court. ARGUMENT I. THIS ACTION SHOULD BE TRANSFERRED TO THE DELAWARE DISTRICT COURT

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to protect litigants, witnesses and the public against unnecessary inconvenience and expense. Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (citations omitted) (superceded by statute on other grounds). In determining whether transfer is appropriate, courts consider numerous private and public interest factors, none of which individually has dispositive weight. See, e.g., In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004); Action Indus., Inc. v. United States Fid. & Guar, 358 F.3d 337, 340 (5th Cir. 2004). The private interest factors include: (1) relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive. The public factors include: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the application of foreign law. In re Volkswagen AG, 371 F.3d at 203. A court also considers the plaintiff s choice of forum, but this factor by itself is neither conclusive nor determinative. In re Horseshoe Entm t, 337 F.3d 429, 434 (5th Cir. 2003). Transfer of this action to the Delaware District Court would serve the interest of justice and the convenience of the witnesses and parties for the following reasons: 1. As an initial matter, the Delaware District Court is one where this action might

have been brought as required under Section 1404(a). Delaware is the state of incorporation of all of the Defendants, and USA Video transacts business within Delaware and has purposefully availed itself of the Delaware District Court in connection with its Movielink litigation on the same patent at issue here. Moreover, Delaware is where the Comcast Defendants, as well as Coxcom, Inc. and Time Warner Cable, Inc., have filed declaratory judgment actions related to the 792 Patent. All of those actions are before Judge Jordan. 2. However, in an apparent attempt to forum shop in view of Judge Jordan s adverse

Movielink decision interpreting its 792 Patent, USA Video commenced this action in a forum having no direct relation to the operative, underlying facts of the case. None of the alleged infringers in this case have principal places of business in Texas which is often the critical and
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controlling consideration in adjudicating transfer of venue motions in intellectual property infringement actions. Spiegelberg v. The Collegiate Licensing Co., 402 F. Supp. 2d 786, 791-792 (S.D. Tex. 2005). Likewise, the Complaint is devoid of any allegation that USA Video (the owner of the 792 Patent and headquartered in Connecticut) has any connection to Texas whatsoever. See Complaint ¶¶ 1, 13. 3. This Court should reject USA Video s transparent attempt to forum shop and

transfer this case to the Delaware District Court, which has already presided and is presiding over litigation related to the 792 Patent. See Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed. Cir. 1997) ( Consideration of the interest of justice, which includes judicial economy, may be determinative to a particular transfer motion, even if the convenience of the parties and witnesses might call for a different result. ) (internal citations omitted). Having overseen the Movielink litigation for several years, Judge Jordan in particular is already familiar with USA Video, the technology at hand, and the 792 Patent. See Zoltar Satellite Sys., Inc. v. LG Elecs. Mobile Commc ns Co., 402 F. Supp. 2d 731, 735 (E.D. Tex. 2005) (noting that [i]n cases that involve a highly technical subject matter, such as patent litigation, judicial economy may favor transfer to a court that is already familiar with the issues involved in the case and granting defendants motions to transfer case from the Eastern District of Texas to the Northern District of California). Not only has Judge Jordan presided over claim construction arguments regarding seventeen separate terms used in the 792 Patent claims, he has also construed the patent s language in a decision affirmed by the Federal Circuit. See Nguyen Decl. Ex. B. 4. In a recent case, the United States District Court for the Northern District of Texas

indicated a willingness to stay or transfer a patent case to another district court where the presiding judge had interpreted the claims of the patent-in-suit in a Markman hearing, examined the patentin-suit s prosecution history, and studied relevant prior art references over several years if that judge consents to preside over the transferred case. See Taylor v. Ishida, No. 3:02-CV-0402-D, 2002 WL 1268028, at *7 (N.D. Tex. May 31, 2002). Specifically, the Court observed that, [a] court can defer to a second-filed [declaratory judgment] action when, as here, the judge in the subsequent case has extensive prior experience concerning the patent-in-suit. . . . The interests of
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justice strongly favor such a course when the judge who will preside over the case presided over another action that involves the same parties and the same patents and has developed a familiarity with the relevant technology. See id. at *7. Similarly, this Court should transfer this case to Judge Jordan in the District of Delaware because, as in Taylor, Judge Jordan s considerable familiarity with the 792 patent presents compelling reasons for such a transfer. See id.; see also Ricoh Co., Ltd. v. Honeywell, Inc., 817 F. Supp. 473, 487 (D.N.J. 1993) (permitting the transfer of an action for patent infringement to the venue of a subsequently filed action for declaratory judgment). 5. Furthermore, once transferred, this case can be consolidated with the other

declaratory judgment lawsuits already pending before Judge