CASE IPR2013-00007
`Patent 7,461,353
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`KYOCERA CORPORATION.
`Petitioner,
`v.
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`SOFTVIEW LLC
`Patent Owner.
`____________
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`KYOCERA’S RESPONSE TO MOTOROLA’S MOTION FOR JOINDER
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`____________
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`CASE IPR2013-00007
`Patent 7,461,353
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`____________
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`CASE IPR2013-00007
`Patent 7,461,353
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`I. INTRODUCTION
`On April 29, 2013, Motorola Mobility (“Motorola”) filed a petition to
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`institute IPR2013-00256, which concerns the ‘353 Patent, and a petition to institute
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`IPR2013-00257, which concerns the ‘926 Patent. In Paper No. 18, the Board
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`observed that
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`Motorola Mobility’s petition to institute IPR2013-00256
`asserts the same grounds of unpatentability as those on
`which we instituted inter partes review IPR2013-00007.
`Motorola Mobility’s petition to institute IPR2013-00257
`asserts the same grounds of unpatentability as those on
`which we instituted inter partes review IPR2013-00004.
`In view of its assertion of the same grounds of
`unpatentability, Motorola Mobility has moved for joinder
`of IPR2013-00256 with IPR2013-00007 and joinder of
`IPR2013-00257 with IPR2013-00004 (Motions For
`Joinder). Patent Owner indicated that it desires to oppose
`Motorola Mobility’s Motions For Joinder.
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`Paper No. 18 at 4-5. The Board ordered that Kyocera and SoftView have 10
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`calendar days to submit arguments opposing Motorola’s Motion for Joinder. Id. at
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`5.
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`Pursuant to the Board’s Order in Paper No. 18, Kyocera raises the following
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`concerns regarding Motorola’s motion. First, if granting Motorola’s motion would
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`CASE IPR2013-00007
`Patent 7,461,353
`delay the date for a final written decision in this IPR, such delay would severely
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`prejudice Kyocera. Second, granting Motorola’s motion may increase Kyocera’s
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`expense for litigating this proceeding. Third, granting Motorola’s motion, on the
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`terms proposed by Motorola, would deprive Kyocera of control over the contents
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`of the 15 page Reply to SoftView’s Opposition. Fourth, granting Motorola’s
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`motion, on the terms proposed by Motorola, would diminish the amount of time
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`Kyocera would have to depose SoftView’s declarants.
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`II. ARGUMENT
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
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`review proceedings under 35 U.S.C. § 315(c), which reads as follows:
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`(c) JOINDER.--If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`a party to that inter partes review any person who
`properly files a petition under section 311 that the
`Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter
`partes review under section 314.
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`“The rules are to be construed so as to ensure the just, speedy, and
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`inexpensive resolution of a proceeding . . . .” Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48756, 48758 (Aug. 14, 2012).
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`CASE IPR2013-00007
`Patent 7,461,353
`In Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (PTAB 2013), the
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`Board permitted joinder of a second petition filed by Microsoft. In that proceeding,
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`the patent owner did not oppose the motion for joinder, and in fact, encouraged it.
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`Id. at 2. Microsoft filed the second petition “after learning that additional claims
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`were being asserted by Patent owner in concurrent district court litigation.”1 Id. at
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`3. When it granted Microsoft’s unopposed motion, the PTAB adjusted the
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`schedule. Id. at 4. As far as Petitioner is aware, the PTAB has not, as yet, ruled on
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`a motion to join by a third party under the circumstances presented here.
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`B. Kyocera Would Be Prejudiced If Granting Motorola’s Motion
`Would Delay This Proceeding
`Kyocera filed a motion to stay the SoftView patent litigation. SoftView LLC
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`v. Kyocera Corp., 10-389-LPS (consolidated) (D. Del. 2013) (D.I. 940, 941) (Ex.
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`A). In that motion, Kyocera represented to the Court that the PTAB must, by
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`statute, issue a final written decision within one year of institution. (Ex. A at 7, 10,
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`11, 15).
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` In response, SoftView argued that Kyocera’s representation is
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`“guesswork.” (D. I. 969 at 11) (Ex. B at 15.) Any decision by the PTAB in this IPR
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`that even hints that the deadline for the final written decision might be extended
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`would severely prejudice Kyocera’s motion to stay in the patent infringement
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`litigation.
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`1 In the SoftView district court litigation, SoftView did not assert additional claims
`after Kyocera filed its IPR petition.
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`CASE IPR2013-00007
`Patent 7,461,353
`C. Granting Motorola’s Motion May Unduly Increase the Expense to of
`this Proceeding to Kyocera
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`Kyocera is concerned that granting Motorola’s motion to join this IPR may
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`increase
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`the expense of
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`this proceeding, and may result
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`in significant
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`complications.
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`1. Briefing May Be More Complicated And More Expensive
`Kyocera objects to Motorola’s suggestion at page 5 of its motion that “[t]he
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`Board may order Kyocera and Motorola to consolidate their submissions and to
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`conduct joint discovery where appropriate.” Under 37 C.F.R. §42.24(c),
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`Kyocera’s reply to the SoftView’s Opposition is limited to 15 pages. Any order
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`preventing Kyocera from having full use of the 15 pages to which it is entitled
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`under the rules would prejudice Kyocera, because it is unlikely that counsel for
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`Kyocera and Motorola would agree on the contents of the Reply, and in any event,
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`a joint reply will require in all probability multiple exchanges of drafts, which will
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`increase attorneys’ fees. Moreover, it would be unjust for Kyocera to lose control
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`of its Reply to SoftView’s opposition because a late-comer (who intentionally
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`chose not to file an IPR petition at the statutory one-year deadline) was allowed to
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`join and wrest control of the briefing and discovery away from the petitioner.
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`2. Granting Motorola’s Motion May Increase the Expense of
`Depositions
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`Consolidation raises significant issues in discovery.
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` For example,
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`conducting “joint discovery” is not as easy as it sounds. Experience in the
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`CASE IPR2013-00007
`Patent 7,461,353
`SoftView litigation has shown that depositions jointly taken by the defendants, with
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`more than one defendant asking questions, have run longer than 7 hours, the most
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`recent example being the deposition of SoftView’s patent attorney, which
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`SoftView cut off at 7 hours in spite of the fact that certain defendants had not had
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`an opportunity to ask questions. This is especially significant where, as here, the
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`depositions will likely be of experts. Thus, Kyocera is likely to (a) incur additional
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`attorneys’ fees for coordinating with counsel for Motorola, or (b) not be able to
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`fully question SoftView’s experts, or (c) incur additional attorneys’ fees for longer
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`depositions.
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`D. Joinder May Not Enhance Efficiency
`The pending Motorola reexaminations of these two patents are stayed,
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`pending the final written decision of this IPR. Addition of Motorola to this IPR
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`may not enhance efficiency, as Motorola contends.
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`If Motorola’s request is granted, there will be a significant issue as to the
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`level of estoppel Motorola will face under 35 U.S.C. § 315(e)(1). Motorola argues
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`that it has limited its petition to the same grounds as those submitted by Petitioner
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`and granted by the Board. Ex. A at 4. In Paper No. 15, this Board raised concern
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`that Apple’s proposed motion to join “could result in delaying the schedule already
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`in place for the ongoing inter partes review, particularly if Apple’s petitions raise
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`grounds of unpatentability not already authorized in our Decisions To Institute
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`CASE IPR2013-00007
`Patent 7,461,353
`entered on March 29, 2013.” Paper No. 15, at 3. Motorola’s inter partes
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`reexamination raises multiple combinations and grounds for invalidity of the
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`asserted claims that are not subject to its IPR petition. If Motorola were allowed to
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`join this IPR, and if the final written decision of the Board in this case were
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`adverse to Motorola with respect to any claim, then Motorola could legitimately
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`argue that it “could not have raised” the other grounds from its inter partes
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`reexamination because, given this Board’s expressed concerns in Paper No. 15,
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`that would have caused the Board to reject Motorola’s petition. Thus, granting
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`Motorola’s petition may subsequently raise significant issues under 35 U.S.C. §
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`315(e)(1) with respect to grounds Motorola “could have raised”, and thus the
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`continued viability of its inter partes reexamination. Thus, granting Motorola’s
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`petition would not “enhance efficiency,” as Motorola contends.
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`CASE IPR2013-00007
`Patent 7,461,353
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`III. CONCLUSION
`For the reasons set forth above, Petitioner respectfully submits that the
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`Board should consider Kyocera’s concerns when it rules on Motorola’s motion.
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`Date: May 13, 2013
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`Respectfully submitted,
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`KATTEN MUCHIN ROSENMAN LLP
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`BY: ___ /Richard P. Bauer/ _____
`Richard P. Bauer (Reg. No. 31,588)
`KATTEN MUCHIN ROSENMAN LLP
`2900 K Street NW - Suite 200
`Washington, DC 20007-5118
`Richard.Bauer@kattenlaw.com
`
`Eric C. Cohen (Reg. No. 27,429)
`Michael S. Dorfman (Reg. No. 46,669)
`Michael S. Tomsa (Reg. No. 64,264)
`KATTEN MUCHIN ROSENMAN LLP
`525 W. Monroe Street
`Chicago, IL 60661-3693
`Eric.Cohen@kattenlaw.com
`Michael.Dorfman@kattenlaw.com
`Michael.Tomsa@kattenlaw.com
`
`ATTORNEYS FOR PETITIONER
`(IPR Trial Nos. 2013-00004 & 2013-00007)
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`CASE IPR2013-00007
`Patent 7,461,353
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6, I hereby certify that on Monday, May 13, 2013,
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`a true copy of the accompanying KYOCERA’S RESPONSE TO MOTOROLA’S
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`MOTION FOR JOINDER was served:
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`by electronic mail, as agreed to by the parties, upon the following:
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`Babak Redjaian
`bredjaian@irell.com
`Ben Yorks
`byorks@irell.com
`IRELL & MANELLA LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
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`by Federal Express upon the following:
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`Counsel for Sofview LLC
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`John C. Alemanni
`Jalemanni@kilpatricktownsend.com
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Counsel for Motorola Mobility LLC
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` Respectfully submitted,
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`___ /Richard P. Bauer /_____
`Katten Muchin Rosenman LLP
`Richard P. Bauer (Reg. No. 31,588)
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`EXHIBIT A
`EXHIBIT A
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`Case 1:10-cv-00389-LPS Document 940 Filed 04/04/13 Page 1 of 2 PageID #: 16617
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`SOFTVIEW LLC,
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`Plaintiff,
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`v.
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`KYOCERA CORP. and KYOCERA
`WIRELESS CORP.,
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`Defendants.
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`)
`)
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`C, A, No, lO-389-LPS
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`C.A. No. l2-989-LPS
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`KYOCERA CORP. AND KYOCERA WIRELESS CORP.'S MOTION TO STAY
`PENDING INTER PARTES REVIEW BY THE PATENT TRIAL AND APPEAL BOARD
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`Defendants Kyocera Corp. and Kyocera Wireless Corp. respectfully move this Court for
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`an order granting a stay of this action pending the final decision ofthe Patent Trial and Appeal
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`Board in inter partes review proceedings of the asserted claims of U.S. Pat. Nos. 7,461,353 and
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`7,831,926 in the United States Patent and Trademark Office. The grounds for this motion are set
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`forth in the Opening Brief filed in support of this motion. In short, a unanimous panel of the
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`Patent Trial and Appeal Board has decided that there is a reasonable likelihood that K yocera is
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`likely to prevail in its challenge to the patentability of all of the asserted claims in this case.
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`Pursuant to Local Rule 7.1.1 , counsel states that a reasonable effort was made to reach
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`agreement with Plaintiff Softview LLC on the matters set forth herein, but that agreement could
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`not be reached.
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`EXHIBIT A PAGE 1
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`

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`Case 1:10-cv-00389-LPS Document 940 Filed 04/04/13 Page 2 of 2 PageID #: 16618
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`Respectfully submitted,
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`lsi John C. Phillips. Jr.
`John C. Phillips, Jr. (#110)
`Megan C. Haney (#5016)
`Phillips, Goldman & Spence, P.A.
`1200 North Broom Street
`Wilmington, DE 19806
`(302) 655-4200
`Email: jcp@pgslaw.com
`mch@pgslaw.com
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`Dated: April 4, 2013
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`OF COUNSEL:
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`Eric C. Cohen
`Michael A. Dorfman
`Katten Muchin Rosenman LLP
`525 W. Monroe Street
`Chicago, Illinois 60661
`(312) 902-5200
`eric.cohen@kattenlaw.com
`michael.dorfman@kattenlaw.com
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`2
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`EXHIBIT A PAGE 2
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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 1 of 15 PageID #: 16620
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
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`SOFTVIEW LLC,
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`C.A. No. 1O-389-LPS
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`PLAINTIFF,
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`VS.
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`C.A. No. 12-989-LPS
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`KYOCERA CORP. and KYOCERA
`WIRELESS CORP.,
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`DEFENDANTS.
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`KYOCERA CORP. AND KYOCERA WIRELESS CORP.'S OPENING BRIEF IN
`SUPPORT OF MOTION TO STAY PENDING INTER PARTES REVIEW BY THE
`PATENT TRIAL AND APPEAL BOARD
`
`John C. Phillips, Jr. (No. 110)
`Phillips, Goldman & Spence, P.A.
`1200 North Broom Street
`Wilmington, DE 19806
`Tel. (302) 655-4200
`Fax (302) 655-4210
`jcp@pgslaw.com
`
`Attorneys for Defendants Kyocera Corp. and
`Kyocera Wireless Corp.
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`OF COUNSEL:
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`Eric C. Cohen
`Michael A. Dorfman
`Katten Muchin Rosenman LLP
`525 W. Monroe Street
`Chicago, Illinois 60661
`(312) 902-5200
`eric.cohen@kattenlaw.com
`michael.dorfman@kattenlaw.com
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`Dated: April 4, 2013
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`EXHIBIT A PAGE 3
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`

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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 2 of 15 PageID #: 16621
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`TABLE OF CONTENTS
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`1.
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`INTRODUCTION AND SUMMARY OF THE ARGUMENT .............................................. 1
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`II. ARGUMENT .......................................................................................................................... 3
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`A. INTER PARTES REVIEW UNDER THE AMERICA INVENTS ACT ........................ 3
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`B. COURTS HAVE GRANTED STAYS PENDING INTER PARTES REVIEW .............. 4
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`C. A STAY IS APPROPRIATE IN THIS CASE .................................................................. 5
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`1. NATURE AND STAGE OF THE PROCEEDINGS .................................................... 5
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`2. LEGAL STANDARD .................................................................................................... 6
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`3. THE STATUS OF THIS CASE FAVORS A STAY .................................................... 7
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`4. A STAY WILL SIMPLIFY THE ISSUES AND TRIAL OF THE CASE AGAINST
`KYOCERA ""'"'''' .......................................................................... """'''''''' ...................... 9
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`5. A STAY WILL NOT UNDULY PREJUDICE SOFTVIEW ...................................... 10
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`III. CONCLUSION .................................................................................................................... 11
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`- 2 -
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`EXHIBIT A PAGE 4
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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 3 of 15 PageID #: 16622
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`Bergstrom, Inc. v. Idle Free Sys., Inc., 3:12-cv-50254, (N.D. I1l., March 21,2013) ...................... 5
`
`Capriola Corp. v. LaRose Industrues LLC,
`8: 12-cv-2346-T-23-TBM, slip op. (MD. Fla., March 13,2013) ............................................. 5
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`Clearlamp, LLC v. LKQ Corp.,
`1 :12-cv-02533 (N.D.Ill., October 18, 2012) ............................................................................. 5
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422, 1426-27 (Fed. CiT. 1998) ................................................................................. 6
`
`In re Translogic Tech., Inc.
`504 F.3d 1249 (Fed. Cir. 2008) ............................................................................................... 10
`
`Landis v. N Am. Co.,
`299 U.S. 248, 254 (1936) .......................................................................................................... 6
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`Network Security Solutions, Inc. v. Alcatel-Lucent USA Inc.,
`6:11-cv-492-LED-JDL (E.D. Tex.) .......................................................................................... 5
`Semiconductor Energy Lab. Co. v. Chimei Innolux Corp.,
`2012 WL 7170593 (C.D. Cal. Dec. 19,2012) ......................................................................... 5
`
`The Trustees o/Columbia University v. Illumina, Inc.,
`12-376-GMS, D.L 89 (D. Del., April 1, 2013) ................................................................. 2,5,8
`
`Translogic Tech., Inc. v. Hitachi, Ltd.,
`250 Fed.Appx. 988,2007 WL 2973955 (Fed. CiT. 2008) ....................................................... 10
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`STATUTES
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`35 U.S.C. § 102 ............................................................................................................................... 9
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`35 U.S.C. § 103 ............................................................................................................................... 9
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`35 U.S.C. § 112 ............................................................................................................................... 7
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`35 U.S.C. § 141(c) .......................................................................................................................... 4
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`35 U.S.C. § 299 ............................................................................................................................... 2
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`35 U.S.C. § 313 ............................................................................................................................... 4
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`35 U.S.c. § 314 ............................................................................................................................... 4
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`35 U.S.C. § 315(e) .......................................................................................................................... 3
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`35 U.S.C. § 316(a)(11) ................................................................................................................ 1,3
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`35 U.S.C. § 319 ............................................................................................................................... 4
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`EXHIBIT A PAGE 5
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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 4 of 15 PageID #: 16623
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`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
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`Pub. L. No. 112-29, § 314(a), 125 Stat. 284 (2011) ....................................................................... 3
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`Pub. Law 112-29, Sept. 16,2011, Sec. 6(c), 125 Stat. 304 ............................................................ 4
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`OTHER AUTHORITIES
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`157 CONGo REC. S952 (daily ed. Feb. 28, 2011) .......................................................................... 3
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`37 C.F.R. § 42.1D7(b) ..................................................................................................................... 4
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`37 C.F.R.§42.15, 77 Fed. Reg. No. 157 (Aug. 12,2012) at 48672 ................................................ 3
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`- 11 -
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`EXHIBIT A PAGE 6
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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 5 of 15 PageID #: 16624
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`I.
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`INTRODUCTION AND SUMMARY OF THE ARGUMENT
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`On March 29, 2013, a panel of three Administrative Patent Judges of the Patent Trial and
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`Appeal Board ("PTAB") unanimously held in two decisions that Defendant Kyocera Corporation
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`("K yocera") "demonstrated a reasonable likelihood of prevailing in its challenge" to all of the
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`asserted claims in this case. (Exhibits A and B). The PTAB's decisions are the result of
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`petitions for a new PTO procedure Imown as "inter partes review" that Kyocera filed on October
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`2, 2012, a few weeks after the date that the new inter partes review provisions of the America
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`Invents Act became effective (September 16,2012). By statute, in these inter partes review
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`proceedings, the PT AB must issue its final written decision regarding the patentability of the
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`claims within one year of institution, in this case by March 29, 2014.35 U.S.C. § 316(a)(11).
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`Because the PT AB has found that it is likely that all of the asserted claims in this case are
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`unpatentable, Kyocera and its co-defendant, Kyocera Wireless Corp. CKWC"), move to stay this
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`case (12-989) pending the outcome of these PTO inter partes review proceedings. Kyocera
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`recognizes that this Court previously denied motions by other defendants to stay their cases
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`pending inter partes reexaminations. (D.I. 439, 440.) Kyocera did not join in those motions,
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`however. Kyocera submits that the unique circumstances presented here compel a stay of the
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`case against Kyocera and KWC.
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`First, when this court denied the previous motion to stay, 14 out of the 20 claims asserted
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`by SoftView had not been rejected in the inter partes reexaminations filed by Apple. (D.I. 369 at
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`42:21-25.) In sharp contrast, in Kyocera's new inter partes review proceedings, the PTAB has
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`found a likelihood that all of the claims asserted by SoftView in this case are unpatentable.
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`Second, in opposing the motion to stay pending inter partes reexaminations, SoftView
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`argued that the inter partes reexaminations would take "three and a half to eight years" (D.I. 369
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`at 65:3-6), and this Court concluded that "the reexamination proceedings will likely require
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`EXHIBIT A PAGE 7
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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 6 of 15 PageID #: 16625
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`several years to reach a final resolution." (D.l. 439 at 7.) In sharp contrast, the new inter partes
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`review statute sets a deadline of March 29, 2014 for the completion of the inter partes review,
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`aud the scheduling orders issued by the PTAB reflect the same. (Exs. C and D.)
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`Third, fact discovery is close to completion, so there is no dauger of "memories fading."
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`(D.l. 369 at 65:18), as SoftView argued in opposition to the other defendauts' previous motion to
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`stay. Moreover, Kyocera has represented to SoftView that Kyocera does not alter the Android
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`software provided by Google that is at issue in this case, aud Kyocera does not know what
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`portions of that software, if any, provide the functionality allegedly covered by SoftView's
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`claims. Thus, depositions of Kyo cera, which must be taken in Japau, will likely be useless on
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`the issue of infringement. The only depositions that will matter are the depositions that relate to
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`the sales of the accused Kyocera products. Kyocera submits that the sales depositions (relating to
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`damages) should be postponed until closer to the trial of Kyocera's case.
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`Fourth, under these circumstances, it would be a duplication of effort to undergo expert
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`discovery. Indeed, parties to a lawsuit pending in this district have recognized that expert
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`discovery should be stayed pending inter partes review. The Trustees a/Columbia University v.
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`Illumina, Inc., 12-376-GMS, D.l. 89 (D. Del., April 1, 2013) (Ex. E) (entering stipulation to stay
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`expert discovery pending inter partes review). Expert discovery on invalidity based on
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`obviousness or auticipation would largely be duplicative of the expert discovery that will take
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`place in the inter partes review proceedings.! As this Court recognized (D.I 439 at 16), this court
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`must hold separate infringement trials. 35 U.S.C. § 299. In that regard, SoftView has more thau
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`it cau haudle with respect to the seven pending lawsuits against other defendauts. Because
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`Kyocera has not chauged the portions of the Android operating system that provide the accused
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`! Depositions of experts who submit declarations are permitted in inter partes review
`proceedings. 35 U.S.C. §316(a)(5)(A).
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`-2
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`EXHIBIT A PAGE 8
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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 7 of 15 PageID #: 16626
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`functionality, the infringement issue is likely to be disposed of by trials against other Android
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`defendants, whose sales of accused devices dwarf the sales of Kyo cera. Further, if the PTAB
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`invalidates all of the claims, as Kyocera expects, the expense of expert discovery in this case
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`would be a waste of a substantial amount of money.
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`Fifth, because both Kyocera and KWC are bound by the estoppel provisions of the inter
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`partes review proceeding (35 U.S.C. § 315(e», the PTAB decision will greatly simplify the
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`issues in Kyocera's case. The PTAB ruling will probably issue before any of those other seven
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`cases are tried. Thus, staying the case against Kyocera should not result in any delay.
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`For these reasons, Kyocera submits that its motion to stay should be granted.
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`II. ARGUMENT
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`A.
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`Inter Partes Review Under the America Invents Act
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`The America Invents Act replaced inter partes reexamination in the Patent Office with a
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`new proceeding called inter partes review. 2 Congress's intent was to provide a "faster, less
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`costly altemative[] to civil litigation to challenge patents." 3 In sharp contrast to inter partes
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`reexaminations, which had no deadlines, an inter partes review must be completed within one
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`year from the date of institution. 35 U.S.C. § 316(a)(lI).
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`Inter partes review is a Patent Office adjudicative proceeding presided over by a three-
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`judge panel of the Patent Trial and Appeal Board ("PTAB"). 35 U.S.C. § 316(c). The
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`proceeding is instituted by the filing of a petition. 35 U.S.C. § 311.4 In this case, Kyocera
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`timely filed its petitions challenging all of the asserted claims in this case. (Exs. A and B.)
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`2 Pub. 1. No. 112-29, § 314(a), 125 Stat. 284 (2011).
`3 157 CONGo REC. S952 (daily ed. Feb. 28, 2011) (statement by Senator Grassley).
`4 At the time that Kyocera filed the petitions at issue in this case, the Patent Office filing fee for
`each petition was $27,000.37 C.F.R.§42.15, 77 Fed. Reg. No. 157 (Aug. 12,2012) at 48672.
`
`- 3
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`EXHIBIT A PAGE 9
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`

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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 8 of 15 PageID #: 16627
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`The patent owner has three months to file a preliminary response to the petition, 35
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`U.S.C. § 313, in which the patent owner may argue "reasons why no inter partes review should
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`be instituted." SoftView's preliminary responses to Kyocera's petitions were due by January 7,
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`2013. 5 SoftView, who is represented in the Patent Office by the same firm that represents it in
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`this lawsuit (Ex. A at 40; Ex. B at 43), chose not to file a preliminary response.
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`The PT AB has a period of six months from the date the petitions are filed to decide
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`whether to institute inter partes review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.l07(b). The PTAB
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`may institute inter partes review only if the petition and any response filed by the patent owner,
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`taken together, establish "that there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least one of the claims challenged in the petition." 35 U.S.C. § 314(a). With
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`respect to Kyocera's petitions, the PTAB found a likelihood that all of the claims SoftView
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`asserts in this case will be held unpatentable.
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`Once instituted, the PTAB must issue a final written decision within one year. 35 U.S.C.
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`§ 316(a)(11). Thus, the PTAB decisions on Kyocera's petitions must issue by March 29, 2014 6
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`A PTAB decision on inter partes review may be appealed only to the Federal Circuit. 35 U.S.C.
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`§ 141(c); 35 U.S.C. § 319.
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`B.
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`Courts Have Granted Stays Pending Inter Partes Review
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`The inter partes review provisions of the AlA became effective on September 16, 2012.7
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`Thus, petitions for inter partes review could not be filed before that date. Kyocera filed its
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`petitions on October 2,2012, just three weeks after the effective date. Because inter partes
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`review has only been available for a very short time, there are only a few decisions on motions to
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`5 37 C.F.R. § 42.107(b).
`6 Although the one-year period can be extended for "good cause," the scheduling orders issued
`by the PTAB have set oral argument for January 7, 2014, indicating a high probability that the
`one-year period will not be extended in this case. (Exs. C and D).
`7 Pub. Law 112-29, Sept. 16,2011, Sec. 6(c), 125 Stat. 304.
`
`-4
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`EXHIBIT A PAGE 10
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`

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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 9 of 15 PageID #: 16628
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`stay pending inter partes review. Those courts that have considered motions to stay pending
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`inter partes review have granted the motions, in some cases, even before the inter partes review
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`was instituted. See, e.g., Semiconductor Energy Lab. Co. v. Chimei Innolux Corp., 2012 WL
`
`7170593 (C.D. Cal. Dec. 19,2012) (reasoning, inter alia, that the "amended standards for
`
`granting inter partes review probably results in an even higher likelihood than under the prior
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`standard that the issues in this action will be simplified by [review]"). The Semiconductor court
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`based its decision in part on the strengthened inter partes review provisions, which set a strict
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`time line for considering validity challenges. 8 By statute, the PT AB must issue its decision on
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`Kyocera's inter parte review proceedings on or before March 29, 20149 Under like
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`circumstances, other courts have granted motions for stay. Capriola Corp. v. LaRose Industrues
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`LLC, 8: 12-cv-2346-T-23-TBM, slip op. (M.D. Fla., March 13, 2013) (Ex. F); Bergstrom, Inc. v.
`
`Idle Free Sys., Inc., 3: 12-cv-50254, minute order, (N.D. Ill., March 21, 2013) (D.I. 37) (D.I. (Ex.
`
`G); Clearlamp, LLC v. LKQ Corp., 1 :12-cv-02533, minute order (N.D. Ill., October 18, 2012)
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`(D.I. 43) (Ex. H), Network Security Solutions, Inc. v. Alcatel-Lucent USA Inc., 6:11-cv-492-
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`LED-JDL (E.D. Tex.) (unopposed) (Ex. I); Trustees o/the University o/Columbia, supra (Ex.
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`E).
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`C.
`
`A Stay Is Appropriate In This Case
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`1.
`
`Nature And Stage Of The Proceedings
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`On May 10,2010, PlaintiffSoftView LLC filed a complaint in this Court in which it
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`asserted infringement of U.S. Patent No. 7,461,353 (the "'353 Patent") against Apple Inc.
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`("Apple") and AT&T Mobility LLC ("AT&T"). (D.I. 1.) On December 3, 2010, Plaintiff filed a
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`First Amended Complaint adding claims for alleged infringement of a second patent, U.S. Patent
`
`8 Id, at 6 (noting that the timing is "significantly less than the delay caused by the old
`~rocedure").
`35 U.S.C. §316(a)(11).
`
`- 5
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`EXHIBIT A PAGE 11
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`

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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 10 of 15 PageID #: 16629
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`No. 7,831,926 (the "'926 Patent"). (D.I. 27.) On September 30, 2011, Plaintiff filed its Second
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`Amended Complaint against Kyocera, KWC and 16 other defendants who market Android
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`phones. (D.I. 108.)
`
`On September 16,2011, America Invents Act ("AlA") was signed into law. Pub. L. No.
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`112-29,125 Stat. 284. The inter partes provisions of the AlA did not become effective until
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`September 16, 2012, the one year auniversary.lO
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`On May 4, 2012, this Court granted Defendants' motion to sever the actions against
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`uruelated defendants to the extent that Defendants sought separate infringement trials. (D.I.
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`354.) On July 26, 2012, tills Court denied motions to stay pending inter partes reexamination.
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`(D.I. 439, 440.) This Court directed the clerk to assign separate civil actions to the cases against
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`uruelated defendant groups. Id. ll On January 10,2013, this Court held a claim construction
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`hearing. It has not yet issued a decision.
`
`2.
`
`Legal Standard
`
`A district court has the inherent power to control its own docket, including the power to
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`stay proceedings. See Ethicon, Inc. v. Quigg. 849 F.2d 1422, 1426-27 (Fed. Cir. 1998). In
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`exercising this discretion, courts weigh the competing interests of the parties. See Landis v. N
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`Am. Co., 299 U.S. 248, 254 (1936) ("[T]he power to stay proceedings is incidental to the power
`
`inherent in every court to control the disposition of the causes on its docket with economy of
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`time and effort for itself, for counsel, and for litigants"). Optimal management of the Court's
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`docket "calls for the exercise of judgment, which must weigh competing interests and maintain
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`an even balance." Id. at 254-55. In deciding whether to stay litigation pending inter partes
`
`review, courts primarily consider three factors: (1) whether a stay will simplify the issues in
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`10 See note 5, supra.
`11 SoftView's case against Kyocera Corp. and Kyocera Wireless Corp. was assigned to c.A. No.
`12-989-LPS.
`
`-6
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`EXHIBIT A PAGE 12
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`

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`Case 1:10-cv-00389-LPS Document 941 Filed 04/04/13 Page 11 of 15 PageID #: 16630
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`question and the trial of the case, (2) whether discovery is complete and whether a trial date has
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`been set, and (3) whether a stay will unduly prejudice or present clear tactical disadvantage to the
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`nonmoving party. Semiconductor, 2012 WL 7170593 at * I.
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`3.
`
`The Status Of This Case Favors A Stay
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`Fact discovery is n