Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 1 of 9
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`RUSS, AUGUST & KABAT
`Reza Mirzaie (SBN 246953)
`Marc A. Fenster (SBN 181067)
`Kent N. Shum (SBN 259189)
`C. Jay Chung (SBN 252794)
`Christian W. Conkle (SBN 306374)
`Jonathan Ma (SBN 312773)
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310/826-7474
`Facsimile 310/826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`kshum@raklaw.com
`jchung@raklaw.com
`cconkle@raklaw.com
`jma@raklaw.com
`
`Attorneys for Plaintiff Neodron Ltd.
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`
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`Neodron Ltd.,
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`v.
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`Plaintiff,
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`Lenovo Group, Ltd., et al.,
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`Defendants.
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` Case No. 3:19-cv-05644-SI
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`Plaintiff Neodron Ltd.’s Notice of Motion
`and Motion to Lift Stay
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`Date: November 13, 2020
`Time: 10:00 AM
`Judge: Hon. Susan Illston
`Courtroom: 1, 17th Floor
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 2 of 9
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`NOTICE OF MOTION ....................................................................................................................1
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`STATEMENT OF RELIEF .............................................................................................................1
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`I.
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`II.
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`INTRODUCTION ...............................................................................................................2
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`STATEMENT OF FACTS ..................................................................................................2
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`III.
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`ARGUMENT .......................................................................................................................3
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`A. No Simplification Can Result from Continuing a Stay Because There Are
`No Instituted IPRs Pending For the Four Patents Now Remaining At Issue
`In This Case. ............................................................................................................3
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`B.
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`C.
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`Stage of Litigation Supports Lifting the Stay. .........................................................4
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`A Continued Stay Unfairly Prejudices Neodron Without Justification. ..................5
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`IV.
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`CONCLUSION ....................................................................................................................5
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 3 of 9
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`NOTICE OF MOTION
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`TO ALL PARTIES AND THEIR RESPECTIVE COUNSEL OF RECORD:
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`PLEASE TAKE NOTICE that on November 13, 2020, by telephone conference, or soon
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`thereafter as the matter may be heard before the Honorable Susan Illston, Plaintiff Neodron Ltd.
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`(“Neodron”) will and hereby moves to lift the stay in this case. Defendants indicated that they
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`oppose lifting of the stay. D.I. 108 at 3-4.
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`STATEMENT OF RELIEF
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`Plaintiff Neodron respectfully requests that the Court lift the stay of this proceeding.
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 4 of 9
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`I.
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`INTRODUCTION
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`The Court previously entered an Order staying this case because there were pending Inter
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`Partes Review (“IPR”) proceedings against a subset of the seven patents asserted in this case.
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`However, based on developments since this Court’s Order, the justification for the stay no longer
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`exists. First, with respect to one of the asserted patents (‘502 patent), the “request for rehearing”
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`regarding Defendants’ denied IPR petition was also ultimately denied, shortly after this Court’s
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`Order. That development leaves four of the seven patents—the ’502 patent, the ‘286 patent, the
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`‘237 patent, and the ‘770 patent—with no pending IPR. And notably, Defendants are time-barred
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`from filing any additional IPR petitions now and are precluded by law from appealing any and
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`all denials of their petitions. Second, in the interest of proceeding toward a resolution of its
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`rights, Neodron has elected to proceed in this case with only these four patents and none of the
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`other three patents. Accordingly, there is no justification for staying this case, and Neodron is
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`unfairly prejudiced by continuing the stay. The stay should be lifted.
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`II.
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`STATEMENT OF FACTS
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`Plaintiff Neodron initially asserted seven patents in this case: United States Patent Nos.
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`8,102,286 (“the ’286 patent”); 8,451,237 (“the ’237 patent”); 8,502,547 (“the ’547 patent”);
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`8,946,574 (“the ’574 patent”); 9,086,770 (“the ’770 patent”); 10,088,960 (“the ’960 patent”); and
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`7,821,502 (“the ’502 patent) (collectively, the “Asserted Patents”).
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`On August 27, 2020, the Court granted Defendants’ stay motion because “[t]he ’547 and
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`’960 patents have already been granted inter partes review, while the defendants’ petition for the
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`’574 patent is still pending,” and because “[t]he petition for the ’502 patent, though already
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`denied by the PTO, is also pending decision through a request for rehearing.” D.I. 106 at 1-2.
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`As the Court’s stay order recognized, “[t]he remaining three patents have either been
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`denied inter partes review (the ’286 patent) or have not as of yet been petitioned by defendants
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`(the ’237 and ’770 patents).” Id.
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`On September 15, 2020, the PTAB denied Samsung’s request for rehearing and denied
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`Defendants’ petition to institute IPR as to the ‘502 patent. See D.I. 108 (Joint Status Report) at 2.
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`RUSS, AUGUST & KABAT
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 5 of 9
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`On September 17, 2020, Neodron notified Defendants that it will elect to proceed only
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`with the four patents which have no instituted IPRs pending, i.e., the ‘286 patent, the ‘237 patent,
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`the ‘770 patent, and the ‘502 patent. See D.I. 108 (Joint Status Report) at 3.
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`III. ARGUMENT
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`A.
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`No Simplification Can Result from Continuing a Stay Because There Are No
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`Instituted IPRs Pending For the Four Patents Now Remaining At Issue In
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`This Case.
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`All IPR proceedings that formed the basis of the Court’s stay here are no longer at issue
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`in this case. On September 17, 2020, Neodron notified Defendants that it will elect to proceed
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`only with the four patents which have no instituted IPRs pending, i.e., the ‘286 patent, the ‘237
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`patent, the ‘770 patent, and the ‘502 patent. See D.I. 108 (Joint Status Report) at 3.
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`Three of the four IPR proceedings that formed the basis of the stay—those involving the
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`‘547, ‘960, and ‘574 patents—are no longer relevant to this case, as the ‘547, ‘960, and ‘574
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`patents are no longer asserted here by Neodron. See D.I. 108 (Joint Status Report) at 3.
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`As to the fourth IPR proceeding, the Court in its stay order stated that “[t]he petition for
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`the ’502 patent, though already denied by the PTO, is also pending decision through a request for
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`rehearing.” D.I. 106 at 1-2. Shortly after the Court’s stay order, on September 15, 2020, the
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`PTAB denied Samsung’s request for rehearing and denied Defendants’ petition to institute IPR
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`as to the ‘502 patent. See D.I. 108 (Joint Status Report) at 2.
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`While there is an IPR petition that Apple Inc. filed against the ‘502 patent on July 29,
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`2020 (IPR2020-01331),1 Neodron expects that petition to be denied institution, just like the other
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`IPR petition against the ‘502 patent. But even if this new IPR petition is instituted, the final
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`written decision is not expected until February 2022 (1 year after the deadline for institution
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`decision in February 2021). Moreover, Defendants have not requested to join this petition.
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`Accordingly, the possibility of this petition simplifying this case is remote at best because (1) the
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`petition is unlikely to be instituted; (2) even if it is instituted, the final written decision in that
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`1 Samsung filed a joinder IPR petition on September 10, 2020 (IPR2020-01610), that seeks to
`join Apple’s petition regarding the ‘502 patent, asserting identical arguments as Apple.
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`RUSS, AUGUST & KABAT
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 6 of 9
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`hypothetical IPR would come 1.5 years later, at which point trial in this case would likely have
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`concluded, should the Court lift the stay now; and (3) statutory estoppel would not apply in any
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`event, as Defendants are not petitioners in that newly filed IPR petition.
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`As to the other three patents remaining as asserted in this case—the ‘286, ‘237, and ‘770
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`patents—there are no IPR petitions or instituted IPRs pending at all. And Defendants are now
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`time-barred from filing any IPR petitions now, as it has now been over 1 year after service of the
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`Complaint in this case. See 35 U.S.C. § 315(b).
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`Moreover, the IPRs that are pending on the three patents no longer at issue (the ‘547,
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`‘960, and ‘574 patents) will not simplify any issue for the four patents that remain asserted (the
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`‘286, ‘237, ‘770, and ‘502 patents) because:
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`• None of the three patents no longer at issue (‘547, ‘960, and ‘574 patents) are
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`related to any of the four patents that remain at issue (the ‘286, ‘237, ‘770, and
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`‘502 patents).
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`• None of the three patents no longer at issue share substantially same specification
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`as any of the four patents that remain at issue.
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`In sum, there is no possibility of any simplification at all for three of the four patents
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`(‘286, ‘237, and ‘770 patents) remaining at issue here, and as to the fourth patent (‘502 patent),
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`the possibility of simplification is remote at best.
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`B.
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`Stage of Litigation Supports Lifting the Stay.
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`In the Court’s stay order, the Court already found that the stage of litigation does not
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`support a stay. See D.I. 106 at 3. The Court also noted that Defendants should have brought their
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`intent to request stay of the case earlier, which also indicate that the stage of litigation does not
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`support a stay. See id. at 2, fn.2 (“Lenovo failed to mention its intent to bring the instant [stay]
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`motion, despite filing it minutes after the conclusion of the July 1, 2020, Markman hearing.”).
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`This case is already in advanced stage. For example, the Court had already conducted
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`claim construction proceeding and issued its claim construction order on July 13, 2020 (D.I. 97),
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`before the case was stayed. And of course, infringement and invalidity contentions were already
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`exchanged long ago, and parties have exchanged written discovery and document productions.
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`RUSS, AUGUST & KABAT
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 7 of 9
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`Accordingly, promptly lifting the stay and proceeding with this litigation would advance “just,
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`speedy, and inexpensive determination” of litigation. See Universal Elecs., Inc. v. Universal
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`Remote Control, Inc., 943 F. Supp. 2d 1028, 1035 (C.D. Cal. 2013).
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`C.
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`A Continued Stay Unfairly Prejudices Neodron Without Justification.
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`Postponing this litigation contravenes the just and speedy resolution of Neodron’s rights.2
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`Lennon Image Techs., LLC v. Macy's Retail Holdings, Inc., No. 2:13-CV-00235-JRG, 2014 WL
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`4652117, at *2 (E.D. Tex. Sept. 18, 2014) (“[A] patent holder has ‘an interest in the timely
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`enforcement of its patent right.’”); see also Trover Grp., Inc. v. Dedicated Micros USA, No.
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`2:13-CV-1047-WCB, 2015 WL 1069179, at *2 (E.D. Tex. Mar. 11, 2015) (“[T]he plaintiffs’
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`claim of prejudice is entitled to consideration, as is the general right of patent owners to timely
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`enforcement of their patent rights.”).
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`In addition to the fact that Neodron is entitled to just and speedy resolution of its rights,
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`Neodron is prejudiced also because “a protracted stay could raise issues with stale evidence,
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`faded memories, and lost documents.” SoftView LLC v. Apple Inc., No. 10-389-LPS, 2012 U.S.
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`Dist. LEXIS 104677, at *4 (D. Del. July 26, 2012).3 The prejudice factor weighs in favor of
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`lifting the stay, particular where, as here, the entire justification of the stay has been eliminated,
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`as explained above.
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`IV. CONCLUSION
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`2 See, e.g., Universal Elecs. V. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1035
`(C.D. Cal. 2013) (“The Court is concerned that allowing the progress of its docket to depend on
`the status of proceedings elsewhere can interfere with its obligation ‘to secure the just, speedy,
`and inexpensive determination of every action’ . . . . This consideration weighs against a stay.”);
`Overland Storage, Inc. v. BTD AG (Germany), No. 10-CV-1700 JLS, 2013 WL 12066130, at *2
`(S.D. Cal. Dec. 10, 2013) (“The Federal Circuit recognizes the existence of a ‘strong public
`policy favoring expeditious resolutions of litigation.’”).
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`3 “Although Defendants contend that the evidence in this case is based on source code that can
`be preserved easily, SoftView must also rely, at least to some extent, on evidence that can only
`be acquired through witnesses, whose memories will inevitably fade and/or who may become
`more difficult to find over time. Conversely, the evidence that Defendants must rely on to prove
`invalidity is primarily prior art references, which seemingly will not change and is less likely to
`become more difficult to locate with the passage of time.” SoftView, 2012 U.S. Dist. LEXIS
`104677, at *4.
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`RUSS, AUGUST & KABAT
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 8 of 9
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` For the foregoing reasons, the Court should lift the stay in this case.
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`DATED: October 9, 2020
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`Respectfully submitted,
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`RUSS, AUGUST & KABAT
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`By: /s/ Reza Mirzaie _______________
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`RUSS, AUGUST & KABAT
`Reza Mirzaie (SBN 246953)
`Marc A. Fenster (SBN 181067)
`Kent N. Shum (SBN 259189)
`C. Jay Chung (SBN 252794)
`Christian W. Conkle (SBN 306374)
`Jonathan Ma (SBN 312773)
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310/826-7474
`Facsimile 310/826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`kshum@raklaw.com
`jchung@raklaw.com
`cconkle@raklaw.com
`jma@raklaw.com
`
`Attorneys for Plaintiff Neodron Ltd.
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`Case 3:19-cv-05644-SI Document 109 Filed 10/09/20 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing document has been
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`served on October 9, 2020 to all counsel of record via the Court’s CM/ECF system.
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`Dated: October 9, 2020
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`/s/ Reza Mirzaie
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