Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`
`
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`CIVIL ACTION NO. 1:13-cv-11567-DJC
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`
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`ZOND, LLC,
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`
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`Plaintiff,
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`v.
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`THE GILLETTE COMPANY, and
`THE PROCTER & GAMBLE
`COMPANY,
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`Defendants.
`
`
`ZOND, LLC’S OPPOSITION TO THE GILLETTE COMPANY AND THE PROCTER &
`GAMBLE COMPANY’S MOTION TO STAY PENDING INTER PARTES REVIEW
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`

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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 2 of 20
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`BACKGROUND .................................................................................................................2
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`I.
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`II.
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`III.
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`ARGUMENT .......................................................................................................................4
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`A.
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`A Stay Would Unduly Prejudice and Present a Clear Tactical
`Disadvantage to Zond ..............................................................................................4
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`1.
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`2.
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`3.
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`4.
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`Gillette and Intel Waited Too Long to File its Petitions for IPR .................5
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`Gillette’s Motion to Stay Is Both Premature and Tardy ..............................5
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`The PTO Has Not Instituted a Single IPR ...................................................9
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`Zond Will Suffer Prejudice if the Case Is Stayed ......................................10
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`There Is No Evidence that a Stay of this Case Would Simplify Issues for
`Trial and Certainly Not for this Court....................................................................12
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`The Litigation Is No Longer in Its Early Stages and Should Not Be Stayed .........16
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`B.
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`C.
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`IV.
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`CONCLUSION ..................................................................................................................17
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`i
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 3 of 20
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`I.
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`INTRODUCTION
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`Ten months into this case, Gillette filed a premature motion to stay these proceedings
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`pending the resolution of multiple petitions in the United States Patent & Trademark Office
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`(“PTO”). Gillette’s Motion (D.I. 67) is aimed at gaining a tactical advantage in this case and
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`deferring the judgment of infringement alleged against it for years. Through its Motion, Gillette
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`seeks to prejudice Zond’s recognized interest in the timely enforcement of its patent rights.
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`Gillette’s Motion is not based on any findings of the PTO, but merely on speculation that the
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`PTO would institute proceedings that would address validity of all the asserted claims in this
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`case.
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`Gillette’s motion is tardy with regard to its awareness of the implicated alleged prior art,
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`but also premature with regard to the filing of petitions for inter partes review (“IPR”) on all ten
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`asserted patents. Though Gillette began filing its IPR petitions months ago and has clearly
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`known about Intel’s IPRs for months—indeed, Gillette and Intel are represented by the same law
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`firm—Gillette delayed filing the instant Motion until just before the start of the claim
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`construction process. Moreover, Gillette and Intel’s petitions rely mostly on prior art that was
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`cited to the PTO during the original prosecution of the patents-in-suit or art that is closely related
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`to it, such that the petitions for IPR and the instant motion could have been filed long ago. At the
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`same time, Gillette’s Motion is premature because the PTO has taken no action on Gillette and
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`Intel’s IPR petitions and will not do so for many months. Further, neither Intel nor Gillette has
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`filed petitions for IPR that cover all asserted claims. Under the law in this and other districts,
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`these are precisely the circumstances that mutually align against a stay. Thus, Gillette’s Motion
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`1
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`should be denied.
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 4 of 20
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`II.
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`BACKGROUND
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`Zond, LLC (f/k/a Zond, Inc.) (“Zond”) filed this patent litigation on July 1, 2013,
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`accusing Gillette of infringing ten patents-in-suit1 related to magnetron sputtering technology.
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`See D.I. 1. Gillette has admitted that it uses magnetron sputtering in its research and
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`development of razor blades, which Zond contends infringes claims of its asserted patents. See,
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`e.g., D.I. 53-2.
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`Zond served its initial disclosures on October 21, 2013 and Gillette served its initial
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`disclosures on November 4, 2013. The parties have each served ten interrogatories on the other
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`and each party has responded. On December 11, 2013, Gillette served 116 requests for
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`production of documents on Zond and on February 4, 2013, Zond served 124 requests for
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`production of documents on Gillette. To date Zond has produced 78,509 pages, and Gillette has
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`produced about 1800 pages. Zond served its infringement contentions on January 13, 2014, and
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`Intel served its invalidity contentions on March 18-19, 2014. A deposition of a Gillette witness
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`took place on April 2, 2014. On May 9, 2014 the parties exchanged proposed claim terms for
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`construction, and have set up a meet and confer retarding that exchange on May 19, 2014. Claim
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`construction briefing is scheduled to begin on June 18, 2014.
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`On March 4, 2014 through April 4, 2014—beginning more than seven months after this
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`action was filed—Gillette filed six petitions for IPR covering all of the claims (whether asserted
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`or not) of three of the ten patents-in-suit: the ’775 Patent, the ’773 Patent, and the ’155 Patent
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`(“Gillette Petitions”). Gillette is not planning on filing petitions on the other seven patents
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`1 Zond has asserted U.S. Patent Nos. 6,853,142 (the “’142 patent”), 6,806,652 (the “’652
`patent”), 7,604,716 (the “’716 patent”), 7,147,759 (the “’759 patent”), 7,811,421 (the “’421 patent”),
`6,805,779 (the “’779 patent”), 7,808,184 (the “’184 patent”), 6,896,775 (the “’775 Patent”), 6,896,773
`(the “’773 Patent”), and 8,125,155 (the “’155 Patent”) (together, the “patents-in-suit” or “asserted
`patents”).
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`2
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 5 of 20
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`because another party in another action, Intel, filed 21 petitions for IPR with respect to six of the
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`seven remaining patents. Intel’s petitions cover all claims (whether asserted or not) of five of the
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`remaining seven patents-in-suit (the ’142, ’184, ’421, ’716 patent and ’759 patents), and cover
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`only some asserted claims (but not others) of the sixth patent (the ’779 patent) (“Intel Petitions”).
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`Intel has yet to file any petitions for IPR with respect to the remaining patent, the ’652 patent,
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`despite its assurances since March 2014 that it would do so. As of the filing of this brief, no
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`petition for IPR regarding the ’652 patent has been filed with the PTO by any party.
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`The Intel Petitions and Gillette Petitions overwhelmingly rely on obviousness arguments
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`generated by combining two or more prior art references, as opposed to anticipation arguments
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`(only 6 of 119 proposed grounds of alleged unpatentability rely on anticipation). That is, in the
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`main, Intel and Gillette do not argue before the PTO that Zond did not first invent the patented
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`subject matter. Their argument is merely that multiple references combined would have
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`allegedly rendered all of Zond’s inventions obvious.
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`The PTO has taken no substantive action on any of the Petitions. Importantly, the PTO
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`has not given any indication that it intends to grant the Petitions with respect to even a single
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`claim. Thus, at present, not a single asserted claim in this case is subject to IPR.
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`The PTO may not decide whether it will dismiss or institute the Petitions for up to six
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`months following the PTO granting a notice of filing date. See 35 U.S.C. § 314(b). Thus, for
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`just the Intel Petitions and the Gillette Petitions filed thus far, the parties may not know whether
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`the PTO will institute IPRs on the grounds requested until November 2014. This does not even
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`account for the IPRs that have yet to be filed (assuming they ever will be filed).
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`Additionally, another party, TSMC, has indicated to Judge Young that it intends to file
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`IPRs of its own, and subsequently seek joinder with Intel’s IPRs, a strategy that TSMC claims
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`3
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 6 of 20
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`will be unopposed by Intel. See Zond, LLC. v. Fujitsu Ltd. et al., Case No. 13-cv-11634, D.I. 84
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`at 2 (D. Mass. Apr. 29, 2014). If those petitions are filed and joinder is granted, the November
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`2014 date could potentially be pushed out even further on 7 of the 10 patents at issue in this
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`action.
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`III. ARGUMENT
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`“The party requesting a stay bears the burden of showing that the circumstances justify an
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`exercise of that discretion.” Nken v. Holder, 129 S. Ct. 1749, 1761 (U.S. 2009). When
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`considering a motion to stay pending PTO review, courts in this district apply a three-factor test:
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`(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the
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`nonmoving party; (2) whether a stay would simplify the issues for trial; and (3) the stage of the
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`litigation. Cynosure, Inc. v. Cooltouch Inc., 2009 WL 2462565, at *2 (D. Mass. Aug. 10, 2009);
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`see also Trustees of Boston Univ. v. Everlight Elec. Ltd., 12-11935-FDS, 12-12326-FDS, 12-
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`12330-FDS, 2013 U.S. Dist. LEXIS 96916, at *4 (D. Mass. July 11, 2013). Each of these factors
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`supports denial of Gillette’s motion.
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`A.
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`A Stay Would Unduly Prejudice and Present a Clear Tactical Disadvantage
`to Zond
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`Staying the case now—based on nothing more than speculation on what the PTO might
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`do—is unduly prejudicial to Zond. Moreover, the mere fact that Gillette and Intel have taken a
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`shotgun approach to their IPR strategy—having filed 27 requests for IPR based largely on prior
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`art already considered by the PTO (with apparently more to come)—suggests that their
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`motivation is purely tactical. Indeed, Intel’s IPR campaign alone consists of the largest number
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`of IPR petitions filed in response to a single litigation to date. Courts have looked to four sub-
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`factors to assess the question of undue prejudice and clear tactical disadvantage: “(1) the timing
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`of the review request; (2) the timing of the request for stay; (3) the status of the review
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`4
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 7 of 20
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`proceedings; and (4) the relationship of the parties.” Davol, Inc. v. Atrium Med. Corp., 12–cv–
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`0958, 2013 WL 3013343, at *2 (D. Del. June 17, 2013). All four favor denial of a stay.
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`1.
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`Gillette and Intel Waited Too Long to File its Petitions for IPR
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`Gillette and Intel could have filed their requests for IPR much earlier, but strategically
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`chose not to. Instead, Gillette waited over seven months into this litigation to file its first petition
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`for IPR. Courts have denied motions to stay pending IPR when the defendant waited over seven
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`months to first file a petition for IPR. See, e.g., Dane Technologies, Inc. v. Gatekeeper Sys., Inc.,
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`12-cv-730, 2013 WL 4483355, at *2 (D. Minn. Aug. 20, 2013).
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`Additionally, Gillette is relying on Intel to proceed on IPRs for a majority of the patents-
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`in-suit. Intel’s reliability when it comes to IPRs has been questionable at best. Despite using
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`dedicated IPR counsel for its petitions, Intel has inexplicably delayed filing all of its promised
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`petitions. Compare, e.g., Kesack Decl. Ex. 13 (Excerpt of IPR Petition No. IPR2014-00443)
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`with Kesack Decl. Ex. 1 (List of Intel Counsel of Record in the Litigation). As of the filing of
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`this brief, it has been almost two and a half months since Intel filed its first petition for IPR, yet it
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`has not completed filing IPRs on all patents-in-suit. Zond v. Intel, D. Mass., 1:13-cv-11570-
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`RGS, D.I. 126 (D. Mass. May 2, 2014). Thus, with each passing day, this factor weighs even
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`more heavily against granting a stay.
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`2.
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`Gillette’s Motion to Stay Is Both Premature and Tardy
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`Gillette’s motion—which was brought over eight months into this case, just as the parties
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`are about to enter claim construction proceedings, but before the PTO has taken any action on
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`any IPR petition—seeks a stay in the precise circumstances where the law is clear that stay is
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`inappropriate.
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`A stay is inappropriate because Gillette’s motion is premature. None of the asserted
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`patents is subject to IPR yet. With respect to the petitioned patents, Intel and Gillette filed the
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`5
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 8 of 20
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`Petitions between February 20 and May 2. The PTO has taken no substantive action on any of
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`the Petitions, and it may not do so for possibly up to six months or longer. See supra Section II.
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`As to the ’652 patent, although Intel promised to file one or more petitions against it “promptly,”
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`as of the filing of this brief, neither Intel nor Gillette has filed any IPR petition on that patent.
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`Thus, with regard to the ’652 patent, Gillette’s stay motion is based merely on Intel’s intentions
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`to file one or more IPR petitions at some point in the future. Ultimately, months from now, the
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`PTO may decide to deny the Petitions entirely, a result that would have no simplifying benefits
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`for the Court and would lead to nothing but delay. And, given that Intel and Gillette’s alleged
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`inchoate IPR petitions on the ’652 patent have not been filed to date, further delay can be
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`anticipated.
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`While Gillette would have the Court disregard the fact that the PTO has taken no action
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`with regard to its IPR petitions, it would betray common sense—and the great weight of the
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`authority—to think that the prematurity of Gillette’s motion does not weigh against a stay prior
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`to institution of any IPR.2 Indeed, in this District, Judge Young has weighed in most recently,
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`2 See e.g., Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., 6:12-CV-1727-ORL-37, 2013
`WL 1969247, at *3 (M.D. Fla. May 13, 2013) (“[I]t seems clear that a stay of a patent
`infringement action is not warranted when based on nothing more than the fact that a petition for
`inter partes review was filed in the USPTO”); Clouding IP LLC v. SAP AG, et al., 1-13-cv-
`01456, Oral Order, D.I. 35 (D. Del. Jan. 21, 2014) (Kesack Decl. Ex. 2); Dane Technologies, Inc.
`v. Gatekeeper Sys., Inc., 12-cv-2730, 2013 WL 4483355, at *2 (D. Minn. Aug. 20, 2013)
`(“Gatekeeper argues, their motion to stay should be granted on the assumption that the PTO will
`review the case. This argument is too speculative.”); Davol, Inc. v. Atrium Med. Corp., 12-cv-
`958-GMS, 2013 WL 3013343 (D. Del. June 17, 2013); Derma Sciences, Inc. v. Manukamed Ltd.,
`12-cv-3388, 2013 WL 6096459 (D.N.J. July 18, 2013); Endotach LLC v. Cook Med. Inc., 13-cv-
`01135, 2014 WL 852831, at *5 (S.D. Ind. Mar. 5, 2014) (“Further, there is no guarantee that the
`USPTO will grant Medtronic’s petition for IPR, which adds to the uncertainty of how much the
`IPR proceedings would simply the issues in this case.”); Kowalski v. Anova Food, LLC, 11-cv-
`00795, 2013 WL 6086029, at *3 (D. Haw. June 14, 2013) (“The Court is unable to determine
`whether the IPR will simplify the issues in this case because the USPTO has not yet decided
`whether to grant review.”); Lennon Image Technologies, LLC v. Lumondi Inc., 2-13-cv-00238,
`D.I. 24 at 3-4 (E.D. Tex. Jan. 1, 2014) (Kesack Decl. Ex. 3) (“At this early and uncertain stage of
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 9 of 20
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`denying motions by TSMC and Fujitsu as premature in another case brought by Zond. See Zond,
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`LLC v. Fujitsu Ltd., et al., Case No. 13-cv-11634-WGY, D.I. 102 (D. Mass. May 9, 2014)
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`(“After hearing from counsel and after a proposal from the court, the Court enters an Order
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`the inter partes proceeding, it remains to be seen whether the USPTO will grant the requested
`review . . . . Therefore, based on the tenuous facts as they currently exist, a stay would be
`premature and unlikely to simplify the issues for trial.”); Lippert Components Manufacturing Inc
`v. Al-Ko Kober LLC, 13-cv-00697, D.I. 36 at 6 (N.D. Ind. Jan. 16, 2014) (Kesack Decl. Ex. 4 )
`(“Until the USPTO decides whether to re-examine the validity of the patents-in-suit, the Court
`presumes that the patents are valid and proper in deference to the USPTO’s original decision
`awarding the patents. Presuming that the patents are valid, there is no reason to delay this
`litigation with a stay.”); MGT Gaming, Inc. v. WMS Gaming, Inc. et al, 13-cv-00691, D.I. 18 at 3
`(S.D. Miss. Dec. 13, 2013) (Kesack Decl. Ex. 5) (“The case should not be further delayed on the
`chance that the IPR proceeding might take place.”); Nat'l Oilwell Varco, L.P. v. Pason Sys. USA
`Corp., 12-cv-1113, 2013 WL 6097578, at *1 (W.D. Tex. June 20, 2013) (“[A]nother reason for
`the Court's decision in Omron is equally present here: the Patent Trial and Appeal Board (PTAB)
`has not actually granted inter partes review of the subject patent yet, and probably will not do so
`for several more months.”); Otto Bock HealthCare LP v. Ossur Hf et al, 13-cv-00891, D.I. 110 at
`3 (C.D. Cal. Dec. 16, 2013) (Kesack Decl. Ex. 6) (“The Court thus agrees with other courts that
`have held that the stay of a patent infringement action is not warranted when based on nothing
`more than the fact that a petition for inter partes review was filed in the Patent Office.”) (internal
`citations and quotations omitted); Procter & Gamble Co. v. Team Technologies, Inc., 12-CV-
`552, 2013 WL 4830950, at *3 (S.D. Ohio Sept. 10, 2013) (“Defendants’ motion to stay is
`premature. Defendants filed their requests for IPR a month ago. . .”); Rensselaer Polytechnic
`Inst. v. Apple Inc.,13-cv-0633, 2014 WL 201965, at *9 (N.D.N.Y. Jan. 15, 2014) (“Apple has
`failed to carry its burden of establishing that a stay should be granted at this juncture, prior to a
`decision by the PTO on whether to accept the matter for IPR.”); RR Donnelley & Sons Co. v.
`Xerox Corp., 12-cv-6198, 2013 WL 6645472, at *3 (N.D. Ill. Dec. 16, 2013) (“Furthermore, the
`Court finds Xerox's assumption that the PTO will grant its petitions based solely on statistics too
`speculative.”); TPK Touch Solutions, Inc v. Wintek Electro-Optics Corp., 13-cv-02218, 2013 WL
`6021324, at *4 (N.D. Cal. Nov. 13, 2013) (“The Court also finds, however, that in most cases,
`the filing of an IPR request by itself does not simplify the issues in question and trial of the
`case.”); TruePosition, Inc., v. Polaris Wireless, Inc., 12-cv-646, 2013 WL 5701529, at *5 (D.
`Del. Oct. 21, 2013) report and recommendation adopted, 12-cv-646, 2013 WL 6020798 (D. Del.
`Nov. 12, 2013) (“To date, the IPR petition has not been granted, rendering any consideration of
`the likelihood of invalidation to be unknown. Thus, the procedural status at this time disfavors
`the grant of a stay.”); Ultratec, Inc. v. Sorenson Communications, Inc., 13-cv-346, 2013 WL
`6044407, at *3 (W.D. Wis. Nov. 14, 2013) (“Similarly, the fact that the Patent Office has not yet
`granted the petitions to review the nine patents adds an additional layer of doubt whether the
`inter partes review will even occur, let alone whether it will simplify the issues or reduce the
`burden of litigation for the parties or the court.”); Universal Electronics, Inc. v. Universal
`Remote Control, Inc., 943 F. Supp. 2d 1028, 1032-33 (C.D. Cal. 2013); U.S. Nutraceuticals, LLC
`v. Cyanotech Corp., 12-cv-366, 2013 WL 6050744 (M.D. Fla. Nov. 15, 2013).
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 10 of 20
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`denying without prejudice [83] Motion to Stay as premature; denying without prejudice [86]
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`Motion to Stay as premature.”). Like Gillette, both TSMC and Fujitsu relied on Intel’s IPR
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`petitions. Judge Young’s decision was well in line with past practice of the District to deny a
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`motion for stay pending IPR before any decision by the PTO to institute. See Trustees of Boston
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`Univ., 2013 U.S. Dist. LEXIS 96916, at *4-5 (“Here, however, it is not yet even established that
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`a re-examination of the ’738 patent will be undertaken by the PTO. Therefore, it would be
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`premature for the Court to analyze this potential reexamination as cause for a stay under the
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`factors set forth above”); Bose Corp. v. SDI Techs., Inc., 13-cv-10277, D.I. No. 35; Bose Corp. v.
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`SDI Techs., Inc., 13-cv-10277, D.I. No. 29 at 1. The one exception is Judge Stearns’ recent
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`decision in the Intel and Hynix cases. However, the facts in this case are substantially different
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`than those in Intel and Hynix. As discussed in more detail below, this case is farther along in
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`discovery than the Intel or Hynix cases. The parties have exchanged substantial volume of
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`documents. Indeed, on May 15, 2014, Zond substantially completed the production of requested
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`documents in the case. Also, depositions have started in the case. In fact, discovery is so far
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`along that Zond has been able, based on discovery obtained from Gillette and specific
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`representations made by Gillette, to stipulate to dismissal of its claims with respect to Gillette’s
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`commercial blades. See D.I. 125. Gillette also cites no case to support that a court should grant
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`a stay based on a third party’s intention to later file an IPR petition, as Gillette proposes to do for
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`the ‘652 patent.3
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`A stay is also inappropriate because Gillette’s motion is tardy. In its motion, Gillette
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`asserts that this case “is still in the early stages.” Mot. at 13. Not so. This case has been
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`3 It is unclear whether Judge Stearns appreciated that not all patents were subject to an IPR
`petition in the Intel case. The terse docket entry suggests that Judge Stearns assumed that Intel filed IPRs
`for all patents in suit: “The seven patents-in-suit are subject to a number of petitions for inter partes
`review (IPR) at the PTO.” 13-11570-RGS (D. Mass.) (D.I. 120).
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`8
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 11 of 20
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`pending for over ten months. Zond served its initial disclosures on October 21, 2013 and Gillette
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`served its initial disclosures on November 4, 2013. The parties have each served ten
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`interrogatories on the other and each party has responded. On December 11, 2013, Gillette
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`served 116 requests for production of documents on Zond and on February 4, 2014, Zond served
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`124 requests for production of documents on Gillette. To date Zond has produced 78,509 pages
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`and Gillette has produced about 1800 pages. Indeed, on May 15, 2014, Zond substantially
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`completed the production of requested documents in this case. Zond served its infringement
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`contentions on January 13, 2014, and Intel served its invalidity contentions on March 18-19,
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`2014. A deposition of a Gillette witness, Dr. Sonnenberg, took place on April 2, 2014. The
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`depositions of at least two other Gillette witnesses have been noticed. On May 9, 2014 the
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`parties exchanged proposed claim terms for construction, and have set up a meet and confer
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`retarding that exchange on May 19, 2014.
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` Courts have refused to grant stays in other cases at similar junctures. See, e.g.,
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`TruePosition, Inc., 2013 WL 5701529 (motion filed 13 months after filing of the lawsuit, before
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`any depositions, claim construction, expert discovery and the conclusion of fact discovery);
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`Ultratec, Inc., 2013 WL 6044407 (motion filed four months after filing of lawsuit, after some
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`written interrogatory and document exchanges, but before the bulk of discovery had occurred).
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`3.
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`The PTO Has Not Instituted a Single IPR
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`Gillette wants this Court to ignore the fact that there is no IPR proceeding pending. As
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`explained above, Gillette has filed six IPR petitions, but no substantive action has been taken on
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`them and none is expected for several months. Similarly, Intel has filed 21 IPR petitions, but no
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`substantive action has been taken on them and none is expected for several months. Moreover,
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`with respect to the ’652 patent, Intel and Gillette have not yet even filed any petitions. Thus,
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`there is no IPR proceeding to even speak of at this time. Instead, Gillette would have this Court
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 12 of 20
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`speculate that the PTO may initiate one or more IPR proceedings sometime this fall, and stay this
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`case on that basis. This Court should follow the case law of this District and the cases cited in
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`note 2, supra, and decline Gillette’s invitation to speculate. See e.g. Trustees of Boston Univ.,
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`2013 U.S. Dist. LEXIS 96916, at *4-5 (“Here, however, it is not yet even established that a re-
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`examination of the ’738 patent will be undertaken by the PTO. Therefore, it would be premature
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`for the Court to analyze this potential reexamination as cause for a stay under the factors set forth
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`above”); Dane Technologies, Inc. v. Gatekeeper Systems, Inc., Case No. 12-cv-2730, 2013 WL
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`4483355, at *2 (“Gatekeeper argues, their motion to stay should be granted on the assumption
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`that the PTO will review the case. This argument is too speculative.”); RR Donnelley & Sons
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`Co., 2013 WL 6645472, at *6 (“Furthermore, the Court finds Xerox’s assumption that the PTO
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`will grant its petitions based solely on statistics too speculative.”); Rensselaer Polytechnic Inst.,
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`2014 WL 201965, at *8 (“In summary, I find that whether any issues attendant to this litigation
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`may simplified through the IPR process is speculative primarily in light of the fact the PTO has
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`yet to accept or deny Apple’s petitions for further review.”). Since there is no IPR proceeding
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`pending, this factor strongly weighs against granting a stay.
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`4.
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`Zond Will Suffer Prejudice if the Case Is Stayed
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`Zond will be prejudiced by a stay even though it does not directly compete with Gillette.
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`As Gillette acknowledges, the IPR proceeding could take as long as twenty-four months from
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`filing—i.e., into 2016. Mot. at 7. That estimate, however, does not include any potential appeal
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`to the Federal Circuit, which could potentially suspend this case until 2017 or longer. Moreover,
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`Gillette does not take into account that, if instituted, the 27-plus IPR proceedings are likely to be
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`joined in some form or fashion under the IPR joinder provisions, in addition to the joinder
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`requests Gillette may be seeking. Given the overlap of patents and prior art, the PTO is likely to
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`extend its time for concluding the IPR proceeding beyond the eighteen-month time limit for good
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 13 of 20
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`cause. See 37 C.F.R. § 42.100(c) (“An inter partes review proceeding shall be administered such
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`that pendency before the Board after institution is normally no more than one year. The time can
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`be . . . adjusted by the Board in the case of joinder.) (emphasis added). Thus, Gillette’s
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`argument that these IPRs will be a “faster, less costly alternative[] to litigation,” see Mot. at 7, is
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`inapplicable in this case, where Intel opted to file a record number of petitions in the same
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`litigation, Gillette filed more petitions that may also be joined with Intel’s filings, and TSMC has
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`promised to file even more petitions that it will request to have joined to Intel’s filings.
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`Consequently, the stay requested by Gillette could last several years, and Zond would be
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`prejudiced because witnesses may become unavailable, their memories may fade, and evidence
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`may be lost during the period of the stay. See Eon Corp. IP Holdings, LLC v. Skytel Corp., 08-
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`cv-385, 2009 WL 8590963, at *2-3 (E.D. Tex. Apr. 29, 2009).
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 14 of 20
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`In addition, Zond may still be entitled to a permanent injunction, even though it does not
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`compete with Defendants. See Ebay Inc. v. MercExchange, LLC, 547 U.S. 388, 393 (2006)
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`(declining to adopt a categorical rule regarding entitlement to injunctive relief); see also
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`Commonwealth Sci. and Indus. Research Org. v. Buffalo Tech. Inc., 492 F. Supp. 2d 600, 607-08
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`(E.D. Tex. 2007), rev’d on other grounds, 542 F.3d 1363 (Fed. Cir. 2008) (granting permanent
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`injunction to a non-competing patent owner). Thus, even though Zond will be able to collect
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`damages for infringement occurring during the stay, it may still suffer from irreparable harm
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`during that time. See Eon Corp. IP Holdings, LLC v. Skytel Corp., 2009 WL 8590963, at *3.
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`B.
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`There Is No Evidence that a Stay of this Case Would Simplify Issues for
`Trial and Certainly Not for this Court
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`A stay is unlikely to simplify the issues for the parties or this Court. As the movant,
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`Gillette bears the burden of proof on this issue, Ultratec, Inc., 2013 WL 6044407, at *2, but
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`Gillette has not carried its burden. Gillette’s main argument about simplification relies on IPR
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`institution and claim cancellation statistics for final written decisions. However, Gillette neglects
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`to mention that, as of May 8, 2014, 137 IPRs have settled while only 47 made it to a final written
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`decision. That means that as of today it is almost three times as likely for an IPR matter to settle
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`as it is to come to a final written decision. This is especially damaging to Gillette’s motion in
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`particular because it relies on Intel to carry out IPRs on 7 of the 10 patents-in-suit—IPRs over
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`which Gillette has no control. The high likelihood of Intel’s IPRs settling before a written
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`decision on seven of the patents-in-suit suggests that those IPRs are unlikely to simplify any
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`issue in this case with respect to those patents. If Intel and Zond settle their dispute and the IPRs
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`are withdrawn, the IPRs will have had zero simplification effect on this case.
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`Case 1:13-cv-11567-DJC Document 81 Filed 05/16/14 Page 15 of 20
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`Furthermore, the IPRs would not simplify any issues in this case because they lack merit.
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`The statistics that Gillette cites do not speak to the merits (or lack thereof) of Gillette’s or Intel’s
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`IPR petitions. Indeed, a number of courts have recognized that Gillette’s argument—that the
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`Court can use past PTO statistics to predict the outcomes in any particular case—as “too
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`speculative” to be given any weight. See Dane Technologies, Inc., 2013 WL 4483355, at *2
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`(“Gatekeeper argues, their motion to stay should be granted on the assumption that the PTO will
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`review the case. This argument is too speculative.”); RR Donnelley & Sons Co., 2013 WL
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`6645472, at *6 (N.D. Ill. Dec. 16, 2013) (“Furthermore, the Court finds Xerox’s assumption that
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`the PTO will grant its petitions based solely on statistics too speculative.”); Rensselaer
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`Polytechnic Inst., 2014 WL 201965, at *8 (“In summary, I find that whether any issues attendant
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`to this litigation may simplified through the IPR process is speculative primarily in light of the
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`fact the PTO has yet to accept or deny Apple’s petitions for further review.”). The PTO has not
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`instituted any IPR, thus there is no evidence that there will be any simplification.
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`What is probative of the merit are the grounds on which Gillette and Intel are proceeding.
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`In its six petitions, Gillette has requested that the PTO institute 31 separate grounds of
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`unpatentability. See Kesack Decl. Exs. 7-12 (Gillette IPR Grounds). Every one of these grounds
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`relies on one or more prior art references that were before the Patent Office during prosecution.
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`For example, in its IPR2014-00495 and IPR2014-00397 petitions against the ’155 patent, Gillette
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`lists as its “primary prior art references” three prior art references: Wang, Kouznetsov, and
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`Mozgrin.4 Every one of these prior art references is cited prior art in the ’155 patent. In fact,
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`Wang is marked with an asterisk, indicating that the examiner himself chose to cite Wang, and
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`4 D.V. Mozgrin, et al, High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic
`Field: Experimental Research, Plasma Physics Reports, Vol. 21, No. 5, pp. 400-409, 1995 (“Mozgrin”);
`U.S. Patent No. 6,413,382 (“Wang”); and Kouznetsov, U.S. Patent Publication 2005/0092596, filed June
`14 (“Kouznetsov”).
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`Case 1:13-cv-11567-DJC D