Case 2:22-md-03034-TGB ECF No. 148-2, PageID.10708 Filed 06/07/23 Page 1 of 4
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`Exhibit A
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`Case 2:22-md-03034-TGB ECF No. 148-2, PageID.10709 Filed 06/07/23 Page 2 of 4
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`Robert Niemeier
`Chris Stewart; neowireless@caldwellcc.com
`DL_Nissan-Neo@jenner.com; dla-toyota-neowireless@us.dlapiper.com; FCA-Neo@Venable.com;
`MercedesNeoWireless@hoganlovells.com; [SERVICE] GM/Neo; Service-Honda/Neo; [SERVICE] Tesla/Neo; VW-
`Neo; FMCL0315L@brookskushman.com; quadrozzi@youngpc.com
`RE: In Re Neo Wireless - Motion to Stay
`Monday, May 15, 2023 7:02:45 PM
`image002.png
`image003.png
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`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
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`Chris,
`
` I
`
` think we can succinctly answer your questions as follows: all Defendants are seeking a stay of the
`entire case through appeals of any post-grant proceeding now, without further caveat or limitation.
`The law supports Defendants’ position and courts commonly grant stays in similar cases where IPR
`petitions have been instituted. See Transtex LLC v. WABCO Holdings Inc., No. 2:17-cv-12793, 2018
`WL 10742464 (E.D. Mich. Dec. 4, 2018). If Neo disagrees, please let us know. We are happy to
`discuss further on Wednesday.
`
`Best,
`Rob
`
`
`Robert Niemeier
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: rniemeier@sternekessler.com
`Direct: 202.772.8634
`
`
`From: Chris Stewart <cstewart@caldwellcc.com>
`Sent: Thursday, May 11, 2023 7:16 PM
`To: Robert Niemeier <RNiemeier@sternekessler.com>; neowireless@caldwellcc.com
`Cc: DL_Nissan-Neo@jenner.com; dla-toyota-neowireless@us.dlapiper.com; FCA-Neo@Venable.com;
`MercedesNeoWireless@hoganlovells.com; [SERVICE] GM/Neo <SERVICEGMNeo@fr.com>; Service-
`Honda/Neo <Service-Honda/Neo@fr.com>; [SERVICE] Tesla/Neo <SERVICETeslaNeo@fr.com>; VW-
`Neo <VW-Neo@sternekessler.com>; FMCL0315L@brookskushman.com; quadrozzi@youngpc.com
`Subject: RE: In Re Neo Wireless - Motion to Stay
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
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`Rob et al.,
`
`As I mentioned in the other thread, we can confer on Wednesday about this and the other issues.
`But in the meantime, please answer the following questions so we can understand the basis of your
`request and discuss with our client:
`
`
`1. Are just VW and Mercedes seeking a stay of their respective cases, or are all Defendants?
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`Case 2:22-md-03034-TGB ECF No. 148-2, PageID.10710 Filed 06/07/23 Page 3 of 4
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`2. If the latter, would all Defendants agree that estoppel as to any one defendant applies to all
`Defendants?
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`3. Are you requesting an immediate stay, or just preemptively seeking a stay should the
`remaining IPRs later be instituted?
`
`4. If the former (ie, you’re not awaiting all institution decisions), why did you wait until several
`months after the filing of the initial IPRs to seek a stay?
`
`5. Would Defendants agree to stay the case as to any instituted patents, but continue the case
`as to those for which an IPR is not instituted?
`
`
`
`
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`6. If a stay is imposed, but one of the later IPRs is not instituted, will you agree to lift the stay? If
`not, what number of patents do you contend must be subject to an instituted IPR to justify an
`ongoing stay?
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`7. Are any Defendants intending to file additional IPRs beyond those currently on file?
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`8. If a stay was imposed, would Defendants agree not to file a future motion to stay or argue for
`the maintenance of an imposed stay based on the filing or institution of any additional IPRs
`(by other Defendants or third parties)?
`
`9. If a stay was imposed, would Defendants agree to an expedited discovery and case schedule
`upon the lifting of the stay?
`
`10. If a stay was imposed, would Defendants agree to submit a joint motion to lift the stay upon
`receiving Final Written Decisions from the PTO (rather than after the exhaustion of all
`appeals)?
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`11. If a stay was imposed, would Defendants agree to forego any 102/103 invalidity defenses in
`the district court (not just the grounds in the IPR) upon denial of institution? Upon issuance of
`a Final Written Decision that confirmed one or more claims? Would Defendants agree to at
`least forego the asserted grounds themselves for any IPR that is not instituted?
`
`
`Thanks,
`Chris
`
`Chris Stewart | Caldwell Cassady Curry PC
`214.888.4846
`
`From: Robert Niemeier <RNiemeier@sternekessler.com>
`Sent: Tuesday, May 9, 2023 12:29 PM
`To: neowireless@caldwellcc.com
`Cc: DL_Nissan-Neo@jenner.com; dla-toyota-neowireless@us.dlapiper.com; FCA-Neo@Venable.com;
`MercedesNeoWireless@hoganlovells.com; [SERVICE] GM/Neo <SERVICEGMNeo@fr.com>; Service-
`
`

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`Case 2:22-md-03034-TGB ECF No. 148-2, PageID.10711 Filed 06/07/23 Page 4 of 4
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`Honda/Neo <Service-Honda/Neo@fr.com>; [SERVICE] Tesla/Neo <SERVICETeslaNeo@fr.com>; VW-
`Neo <VW-Neo@sternekessler.com>; FMCL0315L@brookskushman.com; quadrozzi@youngpc.com
`Subject: RE: In Re Neo Wireless - Motion to Stay
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`Counsel,
`
`In view of the PTAB’s institution of Volkswagen’s IPR petitions on the ’512 patent, the ’450 patent
`and the ’941 patent, and Mercedes’ petition on the ’512 patent, and in view of the additional
`institution decisions that will be forthcoming on the remaining petitions, Defendants intend to move
`to stay the MDL pending resolution of the IPR proceedings.
`
`To avoid multiple meet and confers, Defendants would like to discuss this motion during Friday’s
`meet and confer.
`
`Best,
`Rob
`
`Robert Niemeier
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW, Washington, DC 20005
`Email: rniemeier@sternekessler.com
`Direct: 202.772.8634
`
`