Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 1 of 26 PageID #: 529
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`C.A. No. 13-cv-2109-RGA
`
`JURY TRIAL DEMANDED
`
`C.A. No. 13-cv-2110-RGA
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`JURY TRIAL DEMANDED
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`C.A. No. 13-cv-2111-RGA
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`JURY TRIAL DEMANDED
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`§
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`DELAWARE DISPLAY GROUP LLC
`and INNOVATIVE DISPLAY
`TECHNOLOGIES LLC,
`
`Plaintiffs,
`
`
`v.
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC.,
`LG DISPLAY CO., LTD., and
`LG DISPLAY AMERICA, INC.,
`
`
`Defendants.
`
`DELAWARE DISPLAY GROUP LLC
`and INNOVATIVE DISPLAY
`TECHNOLOGIES LLC,
`
`
`Plaintiffs,
`
`
`v.
`
`PANTECH CO. LTD, and
`PANTECH WIRELESS, INC.,
`
`
`Defendants.
`DELAWARE DISPLAY GROUP LLC
`and INNOVATIVE DISPLAY
`TECHNOLOGIES LLC,
`
`
`Plaintiffs,
`
`
`v.
`
`SONY CORPORATION, SONY
`CORPORATION OF AMERICA, SONY
`ELECTRONICS INC., and SONY
`MOBILE COMMUNICATIONS (USA)
`INC.
`
`Defendants.
`
`
`IDT Exhibit 2005
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`IDT_000044
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 2 of 26 PageID #: 530
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`C.A. No. 13-cv-2112-RGA
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`JURY TRIAL DEMANDED
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`DELAWARE DISPLAY GROUP LLC
`AND INNOVATIVE DISPLAY
`TECHNOLOGIES LLC
`
`
`
`
`v.
`
`VIZIO, INC.,
`
`
`Plaintiffs,
`
`Defendant.
`
`
`
`PLAINTIFFS’ RESPONSIVE BRIEF TO DEFENDANTS’ MOTION TO STAY
`PENDING INTER PARTES REVIEW
`
`
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`FARNAN LLP
`919 North Market Street, 12th Floor
`Wilmington, Delaware 19801
`302-777-0300 Telephone
`302-777-0301 Facsimile
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`
`
`Attorneys for Plaintiffs
`DELAWARE DISPLAY GROUP LLC and
`INNOVATIVE DISPLAY
`TECHNOLOGIES LLC
`
`
`
`Dated: April 22, 2015
`
`Jeffrey R. Bragalone (admitted pro hac vice)
`Patrick J. Conroy (admitted pro hac vice)
`Justin B. Kimble (admitted pro hac vice)
`Daniel F. Olejko (admitted pro hac vice)
`T. William Kennedy, Jr. (admitted pro hac vice)
`BRAGALONE CONROY P.C.
`Chase Tower,
`2200 Ross Ave., Suite 4500W
`Dallas, Texas 75201
`214-785-6670 Telephone
`214-785-6680 Facsimile
`jbragalone@bcpc-law.com
`pconroy@bcpc-law.com
`jkimble@bcpc-law.com
`dolejko@bcpc-law.com
`
`
`
`
`
`
`
`
`IDT_000045
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 3 of 26 PageID #: 531
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION .............................................................................................................. 1
`
`SUMMARY OF THE ARGUMENT ................................................................................. 1
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`Status of the IPRs .................................................................................................... 1 
`
`Relationship of the Parties ...................................................................................... 1 
`
`Timing Factors ........................................................................................................ 2 
`
`Simplification .......................................................................................................... 2 
`
`Discovery and Trial Date ........................................................................................ 2 
`
`Streamlined and Expedited ..................................................................................... 2
`
`BACKGROUND AND STATEMENT OF FACTS .......................................................... 2 
`
`A. 
`
`The Patents .............................................................................................................. 2
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`Plaintiffs’ Attempts to Resolve This Dispute ......................................................... 3
`
`The Effect of Plaintiffs’ Withdrawal of the ’547 and ’194 Patents ........................ 4
`
`A Summary of the IPRs .......................................................................................... 5
`
`Background of the Litigation .................................................................................. 5
`
`ARGUMENT ...................................................................................................................... 6
`
`A.
`
`B.
`
`Defendants’ and Third Parties’ Serial IPRs are not a Streamlined and Expedited
`Procedure. ............................................................................................................... 6
`
`The Factors do not Favor Stay ................................................................................ 7
`
`1.
`
`A stay will unduly prejudice Plaintiffs ....................................................... 7
`
`a.
`
`b.
`
`c.
`
`The timing factors disfavor a stay ................................................... 8
`
`The status of the IPRs disfavors stay .......................................... 101
`
`The relationship between the parties disfavors stay ................... 122
`
`I. 
`
`II. 
`
`
`
`III. 
`
`
`
`
`
`
`
`
`
`
`IV.
`
`
`
`
`
`
`i
`
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`IDT_000046
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 4 of 26 PageID #: 532
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`2.
`
`3.
`
`A stay will not significantly simplify the issues and trial of the case. ...... 13
`
`The factor “whether discovery is complete and whether a trial date has
`been set” weighs against stay. ................................................................... 16
`
`CONCLUSION ............................................................................................................... 188 
`
`
`
`
`
`
`V.  
`
`
`
`
`ii
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`IDT_000047
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 5 of 26 PageID #: 533
`
`TABLE OF AUTHORITIES
`
`Cases 
`
`A.L.M. Holding Co. et al. v. Azco Nobel Surface Chemistry LLC,
` C.A. No. 13-cv-1069-GMS, Order (D. Del. Sep. 17, 2014).......…..…………………………17
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`C.A. No. 12-cv-1107-GMS, 2014 WL 1369721 (D. Del. Apr. 7, 2014) .................................. 16
`
`
`Boston Scientific Corp. v. Cordis Corp.,
`777 F.Supp.2d 783 (D. Del. 2011) .............................................................................................. 7
`
`
`CallWave Commc’ns, LLC v. AT & T Mobility, LLC,
`C.A. No. 12-cv-1701-RGA, 2015 WL 1284203 (D. Del. Mar. 18, 2015) ................................ 17
`
`
`Canatelo LLC v. Axis Communications AB,
`C.A. No. 13-cv-1227-GMS, D.I. 57, (D. Del. May 14, 2014)………………………...…17
`
`Clouding IPLLC v. SAP AG, et al.,
`C.A. No. 13-cv-01456-LPS Oral Order (Jan. 21, 2014)………………………………………16
`
`Elan Microelectronics Corp. v. Pixcir Microelectronics Co. Ltd.,
`No. 2:10-cv-00013, 2013 WL 2394358 (D. Nev. May 30, 2013) .............................................. 6
`
`
`Gen. Elec. Co. v. Vibrant Media, Inc.,
`C.A. No 12-cv-00526-LPS, 2013 WL 6328063 (D. Del. Dec. 4, 2013) ........................ 9, 13, 15
`
`
`Innovative Display Technologies LLC v. Acer Inc., et al.,
` Case No. 2:13-cv-522-JRG (Lead Case), 2014 WL 4230037 (E.D. Tex. Aug. 26, 2014)……..6
`
`Innovative Display Techs., LLC v. Acer, Inc., et al.,
` Case No. 2:13-cv-522-JRG (Lead Case), Slip Op., D.I. 220 (E.D. Tex. Dec. 15, 2014)………6
`
`Intellectual Ventures I LLC v. Xilinx, Inc.,
`C.A. No. 10-cv-1065-LPS, 2014 WL 906551 (D. Del. Mar. 5, 2014) ....................................... 7
`
`
`McRo Inc. v. Bethesda Softworks LLC,
`C.A. No. 12-cv-1509-LPS-CJB, Memorandum Order (D. Del. May 1, 2013)………………..10
`
`Message Notification Technologies LLC v. Microsoft Corp.,
` C.A. No. 13-cv-1881-GMS, D.I. 38, slip op. at 4, n.4 (D. Del. Feb. 24, 2015)………………..8
`
`Neste Oil OYJ v. Dynamic Fuels, LLC,
`C.A. No. 12-cv-1744-GMS, 2013 WL 3353984 (D. Del. July 2, 2013) .............................. 7, 10
`
`
`
`iii
`
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`IDT_000048
`
`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 6 of 26 PageID #: 534
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`Princeton Digital Image Corp. v. Konami Digital Entm't Inc.,
`C.A. No. 12-cv-1461-LPS-CJB, 2014 WL 3819458 (D. Del. Jan. 15, 2014) ................... passim
`
`
`SecureBuy, LLC v. Cardinal Commerce Corp.,
` C.A. No. 13-cv-1792-LPS, D.I. 75 (Memorandum Order Mar. 21, 2014)……………………14
`
`Sunpower Corp. v. PanelClaw, Inc.,
`C.A. No. 12-cv-1633-GMS, Order (May 16, 2014)…………………………………………..16
`
`TruePosition, Inc., v. Polaris Wireless, Inc.,
`C.A. No. 12-cv-646-RGA/MPT, 2013 WL 5701529 (D. Del. Oct. 21, 2013) ................. 7, 8, 10
`
`
`Verizon California Inc. v. Ronald A. Katz Tec. Licensing,
`326 F. Supp. 2d 1060 (C.D. Cal. 2003) ...................................................................................... 6
`
`
`Visto Corp. v. Sproqit Techs., Inc.,
`413 F. Supp. 2d 1073 (N.D. Cal. 2006) ...................................................................................... 5
`
`
`Walker Digital, LLC v. Google, Inc.,
`C.A. No. 11-cv-318-LPS, 2014 WL 2880474 (D. Del. June 24, 2014) .................................... 12
`
`
`
`iv
`
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`IDT_000049
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 7 of 26 PageID #: 535
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`Statutes 
`
`35 U.S.C. § 315 ............................................................................................................................... 8
`
`35 U.S.C. § 316 ............................................................................................................................... 9
`
`
`v
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`IDT_000050
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 8 of 26 PageID #: 536
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`
`
`I.
`
`INTRODUCTION
`
` Defendants’ Motion to Stay should be denied because a stay would unduly prejudice
`
`Plaintiffs. All but one of the patents-in-suit will expire in less than two months, and thus any
`
`delay significantly prejudices Plaintiffs’ ability to license the patents. Further, a stay will not
`
`significantly simplify the issues of the cases because only one of six asserted patents1 is subject
`
`to an IPR, and the litigations have progressed much further than those in the cases relied upon by
`
`Defendants in their Motion. Still further, these cases are part of a larger number of related cases,
`
`several of which were also handled by LG’s attorneys. In other cases, the court in the Eastern
`
`District of Texas construed the claims of the patents-in-suit here, and denied the defendants’
`
`request to file motions for summary judgment on invalidity theories involving the same prior art
`
`at issue here and in the IPRs. As this Response will show, the facts of these cases do not warrant
`
`a stay, and Plaintiffs respectfully submit that Defendants’ Motion should be denied.
`
`
`
`II.
`
`SUMMARY OF THE ARGUMENT
`
`1.
`
`Status of the IPRs: There are seven patents at issue in these cases, but given the
`
`prospective dismissal of two patents, there is only a Single Instituted IPR. It is uncertain than any
`
`of the remaining six patents will even face an instituted IPR.
`
`2.
`
`Relationship of the Parties: Almost every patent at issue expires on June 15, 2015.
`
`Thus, Plaintiffs’ relationship with Defendants (NPE to Seller/Manufacturer) weighs against stay.
`
`Any delay in determining the validity of the patents significantly prejudices Plaintiffs’ ability to
`
`license the patents.
`
`
`1Six of the patents are presently asserted against Defendants LG Display, LG Electronics, Sony,
`and VIZIO, and a seventh patent (the ʼ973 patent) is also asserted against Defendant Lenovo.
`
`
`
`1
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`IDT_000051
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 9 of 26 PageID #: 537
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`3.
`
`Timing Factors: Defendants filed their IPRs too late; in almost every IPR, they
`
`waited until almost the entire statutory one-year limit to file their IPRs, while discovery in this
`
`case was progressing.
`
`4.
`
`Simplification: There are many issues outside the scope of the Single Instituted
`
`IPR. There are six other patents with no corresponding instituted IPR, and there are many other
`
`issues left for determination such as infringement, indefiniteness, and damages.
`
`5.
`
`Discovery and Trial Date: The trial date has been set for October 2016. While
`
`discovery is not complete, it has advanced with Plaintiffs having served interrogatories,
`
`document requests, notices of deposition, and initial and supplemental identifications of accused
`
`products.
`
`6.
`
`“Streamlined and Expedited”: Defendants’ and third parties’ serial IPRs are not a
`
`streamlined and expedited procedure. Plaintiffs are subject to an unending wave of IPRs filed by
`
`both Defendants and third-parties, and Defendants refused to agree that they would not seek
`
`additional stays based on IPRs filed by third-parties.
`
`III. BACKGROUND AND STATEMENT OF FACTS
`
`The Motion involves many patents and IPRs with varying degrees of importance to the
`
`case. Moreover, Plaintiffs have already litigated many of these patents against the same
`
`controlling party, LG Display. Thus, to provide the necessary context for the arguments in this
`
`Response, Plaintiffs offer the Court the following background on the asserted patents, the IPRs,
`
`and the prior litigations.
`
`A.
`
`The Patents
`
`These cases have involved nine patents: (1) 7,404,660 (the “’660 patent”); (2) 7,384,177
`
`(the “’177 patent”); (3) 7,434,974 (the “’974 patent”); (4) 7,537,370 (the “’370 patent”); (5)
`
`7,914,196 (the “’196 patent”); (6) 8,215,816 (the “’816 patent”); (7) 7,434,973 (the “’973
`
`
`
`2
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`IDT_000052
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 10 of 26 PageID #: 538
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`patent”); (8) 6,755,547 (the “’547 patent”); and (9) 7,300,194 (the “’194 patent”) (collectively,
`
`the “patents-in-suit”).2 However, as explained below, Plaintiffs have now dismissed the ʼ547
`
`patent and the ʼ194 patent from the cases with prejudice.
`
`B.
`
`Plaintiffs’ Attempts to Streamline the Case and Resolve The Dispute
`
`During the meet and confer process, Plaintiffs offered to discuss dismissing certain
`
`patents from the case with prejudice in exchange for Defendants dropping their corresponding
`
`IPRs. See April 3, 2015, email from P. Conroy to Defendants’ counsel (attached as Exhibit A to
`
`Declaration of T. William Kennedy (“Kennedy Dec.”)). Instead of engaging with Plaintiffs,
`
`Defendants filed their Motion less than 20 minutes after the offer was extended. Nonetheless,
`
`Plaintiffs continued to negotiate with Defendants in an effort to streamline the case without
`
`resorting to the harsh imposition of a stay of the entire case. Plaintiffs ultimately offered to
`
`dismiss the ’194 and ’547 patents from these cases, with prejudice, if Defendants would merely
`
`agree to drop their corresponding IPRs.
`
`After delaying their response for two weeks, and on the deadline to file this response,
`
`Defendants summarily rejected Plaintiffs’ offer. See April 22, 2015, email from R. Pluta to
`
`Plaintiffs (attached as Exhibit B to Kennedy Dec.); see also April 21, 2015, email from G.
`
`Gewirtz to Plaintiffs (attached as Exhibit C to Kennedy Dec.). Tellingly, no Defendant could
`
`muster any reason for rejecting Plaintiffs’ offer to dismiss with prejudice the patents in exchange
`
`for dismissal of the corresponding IPRs. Id. Apparently, Defendants want to continue their
`
`attempt to bolster their marginal arguments by artificially inflating the number of IPRs that
`
`Defendants contend are at issue in this Motion. Notwithstanding, Plaintiffs are in the process of
`
`dismissing their assertions of the ’194 and ’547 patents against Defendants, with prejudice, and
`
`2 Eight of the patents were asserted against Defendants LG Display, LG Electronics, Sony, and
`VIZIO, and a ninth patent (the ʼ973 patent) was also asserted against Defendant Lenovo.
`
`
`
`3
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`IDT_000053
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 11 of 26 PageID #: 539
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`have submitted to Defendants draft stipulations to effect the dismissal. See April 22, 2015 email
`
`from J. Kimble to Defendants (attached as Exhibit U to Kennedy Dec.). Thus, for purposes of
`
`this response, Plaintiffs will assume that these two patents have been dismissed from the case.
`
`C.
`
`The Effect of Plaintiffs’ Withdrawal of the ’547 and ’194 Patents
`
`Plaintiffs’ pending dismissal of the ’194 and ’547 patents means that only one IPR stands
`
`instituted against any asserted claims. By dismissing the ’547 and ’194 patents, the
`
`corresponding IPRs are no longer relevant to claims asserted in these cases. The instituted IPR
`
`against the ’370 patent (IPR2014-01096) does not cover any of the asserted claims; it only
`
`covers claims 15 and 27. See IPR2014-01096, Institution Decision (Jan 13, 2015) at 18 (attached
`
`hereto in part as Exhibit D to Kennedy Dec.). Thus, there is only one instituted IPR relevant to
`
`this entire case: IPR2014-01362 against the ’177 patent. There remain six asserted patents
`
`without any corresponding instituted IPRs: the ’660 patent; ’177 patent; ’974 patent; ’196 patent;
`
`’816 patent; and ’973 patent. The chart below shows the currently instituted IPRs:
`
`IPR No.
`
`Patent
`
`Comments
`
`Relevance
`
`IPR2014-01096
`
`ʼ370 patent No asserted claims
`
`Irrelevant to Motion
`
`IPR2014-01357
`
`ʼ547 patent
`
`Patent dismissed from case
`
`Irrelevant to Motion
`
`IPR2014-01097
`
`ʼ194 patent
`
`Patent dismissed from case
`
`Irrelevant to Motion
`
`IPR2014-01362
`
`ʼ177 patent
`
`IPR instituted
`
`Based on same art as the
`previously rejected MSJs3
`
`
`3 See IPR2014-01362, Petition at 12 (attached in part as Exhibit E to Kennedy Dec.) (showing
`Grounds 1 and 2 relying on the Melby and Nakamura references); cf. See Innovative Display
`Technologies LLC v. Acer Inc., et al., Case No. 2:13-cv-522-JRG (Lead Case) (E.D. Tex. Aug.
`26, 2014) D.I. 149 (attached as Exhibit F to Kennedy Dec.) at *2 (defendants’ letter brief for
`summary judgment on invalidity relying on the Nakamura and Melby references); see id., D.I.
`220 (E.D. Tex. Dec. 15, 2014) (attached as Exhibit G to Kennedy Dec.) at *1 (denying
`defendants’ request to file a motion for summary judgment of invalidity pursuant to 35 U.S.C. §§
`102 and 103 based on printed publications).
`
`
`
`4
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`IDT_000054
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 12 of 26 PageID #: 540
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`
`
`D.
`
`A Summary of the IPRs
`
`Defendants state that “thirty petitions for IPR are now currently pending for all of the
`
`Asserted Patents in addition to those that have already been granted.” Motion at 1. That
`
`statement is misleading because many of the IPRs are copies of previous IPRs or are irrelevant to
`
`these cases. The Table attached as Exhibit H to Kennedy Dec. shows all of the IPRs against the
`
`patents-in-suit, shading in gray all of the irrelevant or duplicative IPRs. As Exhibit H shows,
`
`various parties have filed 39 IPRs against the patents-in-suit. But many of them either (1) were
`
`not instituted; (2) relate to unasserted patents or claims; or (3) are copies of other petitions. Thus,
`
`only fourteen relevant and unique IPRs remain, and only one of those fourteen IPRs has been
`
`instituted (IPR2014-01362, the “Single Instituted IPR”). The thirteen others (the “Thirteen
`
`Remaining IPRs”) have their institution decisions months away. The fourteen unique IPRs are
`
`summarized, by petitioner, in the below list:
`
`
`
`Sony: 5 of the 14 unique IPRs; all filed in mid-February 2015; institution
`
`decisions expected in late August 2015;
`
`
`
`Toyota: (non-party to this case), 6 the 14 unique IPRs; filed in March 2015.
`
`institution decisions expected September 2015;
`
`
`
`LG: 3 of the 14 unique IPRs; one instituted; institution decision on the other two
`
`expected in late July 2015.
`
`E.
`
`Background of the Litigation
`
`Seven of the patents-in-suit were heavily litigated by indemnitees of LG Display in
`
`consolidated cases in the Eastern District of Texas. The same lawyers who represent LG
`
`Electronics here represented the indemnitees in the Texas cases. Further, the court in those cases
`
`
`
`5
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`IDT_000055
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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 13 of 26 PageID #: 541
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`construed the claims of the patents, and the court also denied the defendants’ requests to file
`
`motions for summary judgment on the much of the same alleged prior art that is at issue in the
`
`IPRs. See Innovative Display Technologies LLC v. Acer Inc., et al., Case No. 2:13-cv-522-JRG
`
`(Lead Case), 2014 WL 4230037 (E.D. Tex. Aug. 26, 2014) (defendants’ objections to the order
`
`were overruled by the district judge, see Innovative Display Techs., LLC v. Acer, Inc., et al.,
`
`2:13-cv-522-JRG (Lead Case), Slip Op., D.I. 219 (E.D. Tex. Dec. 15, 2014) (attached hereto as
`
`Exhibit I to Kennedy Dec.); see also Innovative Display Techs., LLC v. Acer, Inc., et al., 2:13-
`
`cv-522-JRG (Lead Case), Slip Op., D.I. 220 (E.D. Tex. Dec. 15, 2014) (Exhibit G to Kennedy
`
`Dec.). These orders from the related cases are persuasive authority and highly relevant to the
`
`issues in the Related Cases. See Visto Corp. v. Sproqit Techs., Inc., 413 F. Supp. 2d 1073, 1078
`
`(N.D. Cal. 2006) (prior claim construction order “is persuasive and highly relevant here”); see
`
`also Verizon California Inc. v. Ronald A. Katz Tec. Licensing, 326 F. Supp. 2d 1060, 1069 (C.D.
`
`Cal. 2003); Elan Microelectronics Corp. v. Pixcir Microelectronics Co. Ltd., No. 2:10-cv-00013,
`
`2013 WL 2394358, at * 10 (D. Nev. May 30, 2013). This is particularly true because some of the
`
`liquid crystal modules (LCMs) supplied by LG Display to the indemnities in the Texas cases are
`
`at issue here. The Texas cases were settled and dismissed on March 24, 2015, just before the
`
`Defendants filed this Motion to Stay.
`
`IV. ARGUMENT
`
`Defendants’ and Third Parties’ Serial IPRs are not a Streamlined and
`Expedited Procedure.
`
`A.
`
`There is nothing “streamlined and expedited” about the litany of IPRs filed against the
`
`patents-in-suit. As the table in Exhibit H shows, Plaintiffs are subject to an unending stream of
`
`IPRs filed by parties to this litigation, as well as third parties. For example, Mercedes-Benz, a
`
`defendant in another case, filed an IPR against the ’177 patent only a week ago. Moreover, there
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`6
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`IDT_000056
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 14 of 26 PageID #: 542
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`is no time limit or quantity limit on non-defendant third parties filing IPRs against the patents-in-
`
`suit, and evidence from other cases suggests that Plaintiffs may still be fighting IPRs from third
`
`parties long after this case will be tried. See, e.g., Kelly Knaub, Investment Fund Targets VirnetX
`
`Patents In AIA Reviews, Law360, Apr. 15, 2015 (attached hereto as Exhibit J to Kennedy Dec.)
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`(showing last week a non-defendant third party filed IPRs against VirnetX’s patents, while a
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`years-old jury verdict against Apple was pending on appeal. Indeed the article suggests that
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`another non-defendant third party filed IPRs after the verdict in an attempt to “shake-down” the
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`Plaintiff.). Thus, there is a potential for serial stay requests from Defendants based on new IPRs.
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`Indeed, during the meet and confer, Defendants refused to agree that they would not seek further
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`stays based on yet-to-be filed IPRs. See Kennedy Dec. at ¶ 2.
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`B. The Factors do not Favor Stay.
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`The Court considers the following three factors when deciding whether to stay a case:
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`“(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-
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`moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3)
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`whether discovery is complete and whether a trial date has been set.” Neste Oil OYJ v. Dynamic
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`Fuels, LLC, C.A. No. 12-cv-1744-GMS, 2013 WL 3353984, at *1 (D. Del. July 2, 2013). None
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`favor a stay.
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`1. A stay will unduly prejudice Plaintiffs.
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`The scenario described above, with a potentially indefinite stay based on the serial IPRs
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`filed against the patents-in-suit, “would substantially prejudice the Plaintiffs … [a]n indefinite
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`stay from this point forward would deprive ... [P]laintiff[s] ... of any Federal Court forum to
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`resolve the disputes it has chosen to litigate in an effort to enforce its patents.” Intellectual
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`Ventures I LLC v. Xilinx, Inc., C.A. No. 10-cv-065-LPS, 2014 WL 906551, at *2 (D. Del. Mar. 5,
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`2014). To further assess the prejudice that a stay would inflict on Plaintiffs, the Courts have
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`7
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`IDT_000057
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 15 of 26 PageID #: 543
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`“considered a number of sub-factors, including ‘the timing of the request for reexamination, the
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`timing of the request for stay, the status of the reexamination proceedings and the relationship of
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`the parties.’” Neste Oil, 2013 WL 3353984 at *1 (citing Boston Scientific Corp. v. Cordis Corp.,
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`777 F.Supp.2d 783, 789 (D. Del. 2011)). Each of those sub-factors disfavors stay.
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`a. The timing factors disfavor a stay.
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`“The more diligent a party is in seeking inter parties [sic] review, the less likely its
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`petition is prejudicial to the non-movant.” TruePosition, Inc., v. Polaris Wireless, Inc., C.A. No.
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`12-cv-646-RGA-MPT, 2013 WL 5701529, at *6 (D. Del. Oct. 21, 2013) report and
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`recommendation adopted, C.A. No. 12-cv-646-RGA, 2013 WL 6020798 (D. Del. Nov. 12,
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`2013). Here, Defendants have not been diligent in filing their IPRs. As discussed above, there are
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`fourteen unique, pending IPRs at issue here – filed by Sony, LG, and non-party Toyota. Those
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`IPRs can be broken into the Single Instituted IPR and the Thirteen Remaining IPRs. For
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`defendants Sony and LG, their share of the Thirteen Remaining IPRs were filed on almost
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`exactly the statutory one year deadline from service of the complaints in this case. See 35 U.S.C.
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`§ 315(b). Sony was served the Complaint on March 3, 2014, see C.A. No. 13-cv-2111-RGA, D.I.
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`8, and Sony filed its IPRs on February 17 and 18, 2015. Likewise, Plaintiffs served LG on
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`January 2, 2014, see C.A. No. 13-cv-2109-RGA, D.I. 6 and 7,4 and the two yet-to-be instituted
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`LG IPRs were filed on December 23 and 30, 2014. Thus, both LG and Sony waited almost until
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`the statutory one year deadline to file their share of the Thirteen Remaining IPRs. That fact alone
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`disfavors stay. See, e.g., TruePosition, Inc., , 2013 WL 5701529, at *6 (finding that this factor
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`weights against stay because “defendant waited until the end of the statutory deadline to file its
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`IPR, close to the eve of claim construction briefing, and after substantial document discovery
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`4 All docket numbers refer to the LG case, C.A. No. 13-cv-2109-RGA, unless otherwise
`indicated.
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`8
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`IDT_000058
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 16 of 26 PageID #: 544
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`was conducted”) (emphasis added); see also Message Notification Technologies LLC v.
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`Microsoft Corp., C.A. No. 13-cv-1881-GMS, D.I. 38, slip op. at 4, n.4 (D. Del. Feb. 24, 2015)
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`(attached hereto as Exhibit K to Kennedy Dec.). “Filings for IPR made well after the initiation
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`of litigation, however, may suggest an unfair tactical advantage or dilatory motive.” Id.; see also
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`Princeton Digital Image Corp. v. Konami Digital Entm't Inc., C.A. No. 12-cv-1461-LPS-CJB,
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`2014 WL 3819458, at *4 (D. Del. Jan. 15, 2014). LG and Sony waited almost as long as
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`possible – one year after initiation of the litigation. Non-party Toyota, the only other party to file
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`some of the Thirteen Remaining IPRs, waited even longer. As Exhibit H shows, Toyota filed its
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`IPRs just last month.
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`Defendants argue that the Single Instituted IPR will conclude by January 2016, and that
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`the Sony IPRs, if instituted, will conclude by September 2016. But those estimated deadlines
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`ignore the likelihood that each of those periods will be extended by six months because of the
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`large number of IPRs that continue to overwhelm the PTAB. 35 U.S.C. § 316(a)(11). Thus, the
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`Single Instituted IPR could conclude only shortly before trial, and the Sony IPRs might not
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`conclude until around March 2017. Thus, the timing of the conclusion of the IPRs weighs against
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`stay. Cf. Gen. Elec. Co. v. Vibrant Media, Inc., C.A. No 12-cv-00526-LPS, 2013 WL 6328063,
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`at *1 (D. Del. Dec. 4, 2013) (“While the parties and the Court have invested resources in the
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`litigation, and the litigation has advanced significantly since May, this action is far further away
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`from conclusion than is the IPR.”) (emphasis added).
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`Further, Defendants are incorrect in suggesting that these cases “are still in their infancy.”
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`There has been a Rule 16 Scheduling Conference and the Court has issued a Scheduling Order;
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`the parties have exchanged Initial Disclosures; the Plaintiffs have disclosed Initial Claims Charts;
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`the Defendants have disclosed Initial Invalidity Contentions; the Plaintiffs have supplemented
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`9
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`IDT_000059
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 17 of 26 PageID #: 545
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`their identification of accused products; Plaintiffs have served two sets of interrogatories and
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`requests for production to LG Display (and one set of both to all other Defendants); and
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`Plaintiffs have noticed the depositions of each LG Defendant. Still further, Plaintiffs have spent
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`considerable time reviewing the materials produced by the Defendants, and, while Defendants
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`appear to have strategically withheld much information thus far, Plaintiffs have met-and-
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`conferred about the deficiencies of the Defendants’ responses. See Exhibit L to Kennedy Dec.,
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`Email from Kimble to Pluta regarding LG’s document production on November 21, 2014;
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`Exhibit M to Kennedy Dec., Email from Kimble to Gerwitz regarding Sony’s document
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`production on November 21, 2014. The fact that Defendants have not actively engaged in their
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`own discovery should not favor a stay; to hold otherwise would reward Defendants for their own
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`inactivity to the detriment of Plaintiffs who have actively been pursuing discovery for months.
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`This Motion comes too late, and this factor weighs against stay. This case was filed on
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`December 31, 2013. For the overwhelming majority of the potentially-relevant IPRs, Defendants
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`waited over a year from the institution of these cases to file their IPR requests. Defendants did
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`not move for stay until over a year and three months had passed since institution of the cases.
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`During that time, Plaintiffs conducted significant discovery and the case progressed accordingly.
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`b. The status of the IPRs disfavors stay.
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` Of the IPRs potentially relevant to this Motion, there is the Single Instituted IPR and the
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`Thirteen Remaining IPRs. The PTAB has not reached an institution decision on the Thirteen
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`Remaining IPRs but has already denied four IPR petitions on some of the same patents. As this
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`District stated in Princeton Digital, “in light of the early stage of the review proceedings here
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`(with the PTO not yet having determined whether to grant review) the length of the expected
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`delay increases the risk of prejudice to Plaintiff … Therefore, the status of the IPR proceeding
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`weighs against granting a stay.” Princeton Digital Image Corp., 2014 WL 3819458, at *5 (citing
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`10
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`IDT_000060
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`

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`Case 1:13-cv-02109-RGA Document 41 Filed 04/22/15 Page 18 of 26 PageID #: 546
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`Neste Oil, 2013 WL 3353984, at *2); see also McRo Inc. v. Bethesda Softworks LLC, C.A. No.
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`12-cv-1509-LPS-CJB, Memorandum Order at *8-9.n3 (D. Del. May 1, 2013) (attached hereto as
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`Exhibit N to Kennedy Dec.) (“For the reasons set forth above, however, in the instant cases, the
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`Court finds it more appropriate to wait to decide a motion to stay until the PTO issues its initial
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`decision.”); see also TruePosition, Inc., 2013 WL 5701529, at *5 (“To date, the IPR petition has
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`not been granted, rendering any consideration of the likelihood of invalidation to be unknown.
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`Thus, the procedural status at this time disfavors the grant of a stay.”).
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`Defendants misapply several cases and statistics to support their arguments. Defendants
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`cite Princeton Digital as supporting their argument, but Princeton Digital held that the early
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`stage of an IPR (i.e., no institution decision) weighs against the stay for this factor. Furthermore,
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`Princeton Digital’s outdated conclusion that “from a statistical perspective, the probability of a
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`grant of review is very high” was based on data from early 2013 when institutions of IPRs were
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`much more likely (only about 8% denied). Princeton Digital, C.A. No. 12-cv-1461-LPS-CJB,
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`2014 WL 3819458, at *2, n 5 (noting that as of May 2013, the PTO had issued decisions on 61
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`petitions and instituted inter partes review in 56 of those cases). Using current data, the trend
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`shows that