Case 1:14-cv-01432-LPS Document 173 Filed 02/26/18 Page 1 of 5 PageID #: 3575
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ELM 3DS INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`et al.,
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`Defendants.
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`ELM 3DS INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`MICRON TECHNOLOGY, INC., et al.,
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`Defendants.
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`ELM 3DS INNOVATIONS, LLC,
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`Plaintiff,
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`V.
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`SK HYNIX INC., et al.,
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`Defendants.
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`Civil Action No. 14-1430-LPS-CJB
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`Civil Action No. 14-1431-LPS-CJB
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`Civil Action No. 14-1432-LPS-CJB
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`MEMORANDUM ORDER
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`At Wilmington, Delaware this 26th day of February, 2018.
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`1.
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`On November 13, 2017, Plaintiff Elm 3 DS Innovations, LLC ("Plaintiff') filed a
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`motion seeking to lift the stay in these three cases (the "Motion"). (D.I. 160; D.I. 136, Civil
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`Case 1:14-cv-01432-LPS Document 173 Filed 02/26/18 Page 2 of 5 PageID #: 3576
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`Action No. 14-1431-LPS-CJB; D.I. 163, Civil Action No. 14-1432-LPS-CJB)1 The stay was in
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`place "pending further proceedings before the [United States Patent and Trademark Office's]
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`Patent Trial and Appeal Board" in light of then-pending inter partes review ("IPR") proceedings
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`concerning all but one of the 13 patents-in-suit in this case. (Oral Order, October 12, 2016)
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`Defendants Samsung Electronics Co., Ltd., Samsung Semiconductor, Inc., Samsung Electronics
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`America, Inc., Samsung Austin Semiconductor, LLC, Micron Technology, Inc., Micron
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`Semiconductor Products, Inc., Micron Consumer Products Group, Inc., SK hynix Inc., SK hynix
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`America Inc., Hynix Semiconductor Manufacturing America, Inc., and SK hynix Memory
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`Solutions Inc. ("Defendants") oppose the Motion. (D.I. 164 at 1) The Motion was fully briefed
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`as of December 11, 2017, (D.I. 166), and was argued telephonically on February 26, 2018.
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`2.
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`A court has discretionary authority to grant a motion to stay. See Cost Bros., Inc.
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`v. Travelers Indem. Co., 760 F.2d 58, 60-61 (3d Cir. 1985). In determining whether a stay is
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`appropriate in the first instance, our Court typically considers three factors: (1) whether granting
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`the stay will simplify the issues for trial; (2) the status of the litigation, particularly whether
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`discovery is complete and a trial date has been set; and (3) whether a stay would cause the non(cid:173)
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`movant to suffer undue prejudice from any delay, or allow the movant to gain a clear tactical
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`advantage. See, e.g., Princeton Dig. Image Corp. v. Konami Dig. Entm 't Inc., Civil Action Nos.
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`12-1461-LPS-CJB, 13-335-LPS-CJB, 2015 WL 219019, at *2 (D. Del. Jan. 14, 2015). "When a
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`court has imposed a stay, but 'circumstances have changed such that the court's reasons for
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`imposing [that] stay no longer exist or are inappropriate,' the court also has the inherent power
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`The Motion was filed in all three cases, and for convenience the Court will
`hereafter cite to documents in Civil Action No. 14-1430-LPS-CJB.
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`2
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`Case 1:14-cv-01432-LPS Document 173 Filed 02/26/18 Page 3 of 5 PageID #: 3577
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`and discretion to lift the stay." Id (quoting Auto. Techs. Int'/., Inc. v. Am. Honda Motor Co.,
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`C.A. Nos. 06-187-GMS, 06-391 GMS, 2009 WL 2969566, at *2 (D. Del. Sept. 15, 2009)). "On
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`the other hand, 'where there are no new circumstances that impose hardship on the plaintiff or
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`that change the court's earlier disposition imposing the stay, the plaintiffs motion to lift the stay
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`should be denied."' Id ( quoting Auto. Techs. Int'/., Inc., 2009 WL 2969566, at *2).
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`3.
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`Here, circumstances have changed from the time of the Court's prior decision to
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`stay this matter. Most significantly, the PTAB has issued Final Written Decisions as to
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`proceedings regarding the claims of 11 of the 13 patents-in-suit; in each of those decisions, the
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`PTAB rejected all of Defendants' unpatentability arguments. (D.I. 161 at 2) As to a 12th patent(cid:173)
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`in-suit, United States Patent No. 8,791,581 (the "'581 patent"), the PTAB has determined not to
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`institute review at all. (Id.) And with regard to the 13th patent-in-suit, the PTAB found that the
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`two remaining asserted claims were unpatentable. (Id) The Final Written Decisions regarding
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`the claims of the 11 patents-in-suit that the PTAB found not unpatentable are currently on appeal
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`to the United States Court of Appeals for the Federal Circuit; Defendants now ask that the Court
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`continue the stay pending resolution of that appeal. (D.I. 164 at 1-2, 19; D.I. 166 at 1)
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`4.
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`As Plaintiff notes, no matter what happens with the pending appeal, the case will
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`certainly go forward unaffected as to one of the patents-in-suit: the '581 patent, which is not the
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`subject of appellate review. (D.I. 166 at 1)
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`5.
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`But even as to the 11 patents-in-suit that are the subject of the appeal, the case for
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`a stay no longer makes good sense on simplification grounds, in light of what we now know. As
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`compared to when the stay was issued-at a time when the PTAB had found a "reasonable
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`likelihood" that the claims of these 11 patents would be found unpatentable-now the best data
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`Case 1:14-cv-01432-LPS Document 173 Filed 02/26/18 Page 4 of 5 PageID #: 3578
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`point we have from the PT AB suggests that these claims will survive. While the parties differ on
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`the appropriate metric to look to, all sides agree that the odds of any individual PT AB IPR
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`decision being overturned or vacated by the Federal Circuit on appeal are no greater than 25
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`percent. (D.I. 161 at 8; D.I. 164 at 15; D.I. 166 at 3) And while it is of course possible that the
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`Federal Circuit will come to a different conclusion than did the PTAB, the "mere possibility (as
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`opposed to 'reasonable likelihood') that the asserted claims could be invalidated [after an] appeal
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`and [that this would] result in simplification is too speculative to be given much weight."
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`Network-I Sec. Sols., Inc. v. Alcatel-Lucent USA Inc., CASE NO. 6:11CV492, 2015 WL
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`11439060, at *3 (E.D. Tex. Jan. 5, 2015) (emphasis in original); see also Zoll Med Corp. v.
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`Respironics, Inc., C.A. No. 12-1778-LPS, 2015 WL 4126741, at *1 (D. Del. July 8, 2015).
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`6.
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`The Court understands that there are scenarios in which, if the Court lifts the stay
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`now and the Federal Circuit does end up vacating or reversing some portion or all of the PTAB's
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`decisions, that might complicate matters in this case. (See D.I. 164 at 14) But those are
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`complications that (if they come to pass) Defendants will have to live with, having taken their
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`best shot at the PTAB and lost.
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`7.
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`With regard to the issue of undue prejudice, Plaintiff has already suffered from
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`delay in its ability to have it allegations of patent infringement adjudicated in this Court. While it
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`is true that the parties are not competitors, (D .I. 164 at 16-17), continuing the stay in favor of an
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`appeal here ( especially where the decisions being appealed favor Plaintiff) would cause Plaintiff
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`some real prejudice. Were the stay to continue through the resolution of the appeal, the parties
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`agree that it is likely that it would not be lifted until late 2018 at the earliest. (D.I. 161 at 7; D.I.
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`164 at 2-3; D.I. 166 at 6) For a Plaintiff who filed this suit over three years ago, and who saw
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`Case 1:14-cv-01432-LPS Document 173 Filed 02/26/18 Page 5 of 5 PageID #: 3579
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`nearly all of its claims emerge unscathed in the PTAB, that is a long time to be asked to continue
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`to wait. See Zoll Med Corp., 2015 WL 4126741, at *l.
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`8.
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`The delay Plaintiff has already faced has also occasioned other real-world
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`consequences, in terms of Plaintiffs ability to present certain evidence at trial. During the
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`pendency of the stay, the sole inventor on the patents-in-suit, Glenn Leedy, unexpectedly passed
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`away. (D.I. 161 at 3) While it is hard to know if further delay would cause additional harm to
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`Plaintiffs case, it should not have to run that risk under these circumstances.
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`9.
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`The Court recognizes that the Federal Circuit's decision on the pending appeal-
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`particularly its view of the proper claim construction for the disputed term "substantially
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`flexible"-will have import in this case. (D.I. 164 at 7, 11) The parties, in preparing a proposed
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`Scheduling Order, can work to take into account the likely timing of a Federal Circuit appellate
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`decision when fashioning their request for a Markman hearing date. Cf Zoll Med Corp., 2015
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`WL 4126741, at *1 n.3; see also (D.I. 166 at 5).
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`10.
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`The Motion is thus GRANTED.
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`Christopher J. Burke
`UNITED STATES MAGISTRATE JUDGE
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`5
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