Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 1 of 18 PageID #: 12491
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Plaintiffs,
`
`Defendants.
`
`DELAWARE DISPLAY GROUP LLC
`and INNOVATIVE DISPLAY
`TECHNOLOGIES LLC,
`
`v.
`
`
`
`
`
`
`
`
`LENOVO HOLDING CO. INC., and
`LENOVO (UNITED STATES) INC.,
`
`
`
` C.A. No. 13-2108-RGA
`
` JURY TRIAL DEMANDED
`
`
`
` C.A. No. 13-2109-RGA
`
` JURY TRIAL DEMANDED
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
` C.A. No. 13-2112-RGA
`
` JURY TRIAL DEMANDED
`
`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,
`
`Defendant.
`
`v.
`
`
`
`
`
`
`
`
`VIZIO, INC., et al.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`DEFENDANTS’ JOINT REPLY IN SUPPORT OF RENEWED
`MOTION TO STAY PENDING INTER PARTES REVIEW
`
`
`
`
`
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 2 of 18 PageID #: 12492
`
`POTTER ANDERSON & CORROON LLP
`Richard L. Horwitz (#2246)
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`(302) 984-6000
`rhorwitz@potteranderson.com
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Counsel for Defendants Lenovo Holding Co.
`Inc. and Lenovo (United States) Inc.
`
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Adam W. Poff (#3990)
`Pilar G. Kraman (#5199)
`1000 North King Street
`Rodney Square
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`pkraman@ycst.com
`
`Counsel for Defendant VIZIO, Inc.
`
`ROSS ARONSTAM & MORITZ LLP
`David E. Ross (#5228)
`Benjamin J. Schladweiler (#4601)
`100 S. West Street, Suite 400
`Wilmington, DE 19801
`(302) 576-1600
`dross@ramllp.com
`bschladweiler@ramllp.com
`
`Counsel for Defendants LG Electronics, Inc.,
`LG Electronics U.S.A., Inc., LG Display Co.,
`Ltd., and LG Display America, Inc.
`
`
`
`
`
`Dated: April 21, 2016
`
`2
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 3 of 18 PageID #: 12493
`Case 1:13—cv—O2109—RGA Document 310 Filed 04/21/16 Page 3 of 18 Page|D #: 12493
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`
`I.
`I.
`
`A STAY WILL UNQUESTIONABLY RESULT IN SIMPLIFICATION OF ISSUES ...... 1
`A STAY WILL UNQUESTIONABLY RESULT IN SIMPLIFICATION OF ISSUES .... .. 1
`
`A.
`A.
`
`B. Defendants’ Proposed Estoppel Will Simplify Issues .................................................. 4
`B. Defendants’ Proposed Estoppel Will Simplify Issues ................................................ .. 4
`
`Issue Simplification Factor Does Not Require a Complete Overlap ............................ 1
`Issue Simplification Factor Does Not Require a Complete Overlap .......................... .. 1
`
`
`II. A STAY WILL NOT UNDULY PREJUDICE OR PRESENT A TACTICAL
`II.
`A STAY WILL NOT UNDULY PREJUDICE OR PRESENT A TACTICAL
`
`DISADVANTAGE TO PLAINTIFFS .................................................................................. 4
`DISADVANTAGE TO PLAINTIFFS ................................................................................ .. 4
`
`A. A Stay Until the IPRs are Resolved Poses No Real Concern ....................................... 4
`A. A Stay Until the IPRs are Resolved Poses No Real Concern ..................................... .. 4
`
`B. The Timing of Defendants’ Request Favors a Stay ...................................................... 5
`B. The Timing of Defendants’ Request Favors a Stay .................................................... .. 5
`
`C. The Status of the IPRs Favors a Stay ............................................................................ 6
`C. The Status of the IPRs Favors a Stay .......................................................................... .. 6
`
`
`III. THE AMOUNT OF WORK REMAINING TO BE DONE FAVORS A STAY ................. 8
`III. THE AMOUNT OF WORK REMAINING TO BE DONE FAVORS A STAY ............... .. 8
`
`IV. A STAY IS APPROPRIATE IN VIEW OF PLAINTIFFS’ ACTIONS FOLLOWING
`IV. A STAY IS APPROPRIATE IN VIEW OF PLAINTIFFS’ ACTIONS FOLLOWING
`
`RESOLUTION OF DEFENDANTS’ PREVIOUS MOTION FOR STAY .......................... 9
`RESOLUTION OF DEFENDANTS’ PREVIOUS MOTION FOR STAY ........................ .. 9
`
`V. CONCLUSION .................................................................................................................... 10
`V.
`CONCLUSION .................................................................................................................. .. 10
`
`
`
`i
`
`
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 4 of 18 PageID #: 12494
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-cv-01107-GMS, 2014 U.S. Dist. LEXIS 47430
`(D. Del. Apr. 7, 2014) ................................................................................................................2
`
`CallWave Commc’ns, LLC v. AT&T Mobility, LLC, et al.,
`No. 12-1701-RGA, 2015 WL 1284203 (D. Del. Mar. 18, 2015) ..............................................4
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)..................................................................................................7
`
`General Electric Company v. Vibrant Media, Inc.,
`No. 1:12-cv-00526-LPS, D.I. 91, slip op. (D. Del. Dec. 4, 2013) .............................................8
`
`Intellectual Ventures I LLC v. Xilinx, Inc.,
`No. 10-cv-065, 2014 WL 906551 (D. Del. Mar. 5, 2014) .........................................................5
`
`LG Electronics, Inc., et al. v. Toshiba Samsung Storage Technology Korea Corp.,
`No. 12-1063-LPS-CJB, D.I. 92, slip op. (D. Del. Dec. 11, 2015) .............................................3
`
`Mendenhall v. Barber–Greene Co.,
`26 F.3d 1573 (1994) ...................................................................................................................7
`
`MiiCs & Partners America Inc. v. Funai Electric Co. Ltd. et al.,
`No. 1:14-cv-00804-RGA, D.I. 100, slip op. (D. Del. Feb. 25, 2016) ........................................9
`
`Mission Abstract Data L.L.C. v. Beasley Broad. Grp., Inc.,
`No. 11-176-LPS, 2011 U.S. Dist. LEXIS 130934 (D. Del. Nov. 14, 2011) ..............................3
`
`Neste Oil OYJ v. Dynamic Fuels, LLC,
`No. 12-1744, 2013 U.S. Dist. LEXIS 92416 (D. Del. July 2, 2013) .....................................2, 5
`
`Nexans, Inc. v. Belden, Inc.,
`No. 12-1491-SLR-SRF, 2014 U.S. Dist. LEXIS 20116
`(D. Del. Feb. 19, 2014) ..............................................................................................................2
`
`Nexans, Inc. v. Belden, Inc.,
`No. 12-1491-SLR/SRF, 2014 U.S. Dist. LEXIS 32322
`(D. Del., Mar. 12, 2014).............................................................................................................2
`
`Pegasus Dev. Corp. v. DirecTV, Inc.,
`No. 00-1020-GMS, 2003 U.S. Dist. LEXIS 8052 (D. Del. May 14, 2003)...............................3
`
`ii
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 5 of 18 PageID #: 12495
`
`Princeton Digital Image Corp. v. Konami Digital Entm’t, Inc.,
`No. 12-cv-1461-LPS-CJB, 2014 U.S. Dist. LEXIS 61555
`(D. Del. Jan. 15, 2014) ...............................................................................................................3
`
`Semiconductor Energy Lab. Co. v. Chimei Innulox Corp.,
`No. 12-21, 2012 U.S. Dist. LEXIS 186322 (C.D. Cal. Dec. 19, 2012) .....................................2
`
`SoftView LLC v. Apple Inc.,
`No. 12-cv-989-LPS, 2013 U.S. Dist. LEXIS 125900 (D. Del. Sept. 4, 2013) ..........................8
`
`Virtual Agility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................4
`
`Statutes
`
`35 U.S.C. § 314(a) .......................................................................................................................2, 5
`
`
`
`iii
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 6 of 18 PageID #: 12496
`
`
`
`
`Plaintiffs’ Opposition Brief (D.I. 300)1 demonstrates that Plaintiffs face no prejudice
`
`from a stay. The most efficient use of the Court’s, the Patent Office’s, and the parties’ time and
`
`resources is to stay this case pending the results of the newly instituted IPRs on the remaining
`
`patents-in-suit, U.S. Patent Nos. 7,537,370 (the “’370 Patent”) and 7,434,974 (the “’974
`
`Patent”). All asserted ’974 Patent claims in this case are now under review. And, although some
`
`asserted claims of the ’370 Patent are not subject to the newly instituted IPRs, the similarity of
`
`the claim language at issue ensures that the Court will benefit from the Patent Trial and Appeal
`
`Board’s (“PTAB”) analysis and expertise. Thus, invariably, the events leading up to and
`
`including trial will be simplified, likely materially so.
`
`
`
`As summarized here and in Defendants’ Opening Brief (D.I. 280), all relevant factors
`
`weigh in favor of a stay pending final exhaustion of these IPRs. In the alternative, a limited
`
`postponement of the trial dates for these cases until after March 17, 2017, when final decisions in
`
`the newly instituted IPRs are expected, will ensure that the Court and the parties do not
`
`unnecessarily expend resources just to arrive at a determination which may be immediately
`
`negated (if not preempted) by a PTAB decision in one of these IPRs. Indeed, Plaintiffs have
`
`already informed the PTAB that the December 13, 2016 hearing date in the newly instituted IPRs
`
`conflicted with the LG trial scheduled for December 5, 2016 and requested that PTAB delay its
`
`hearings on the IPR proceedings which PTAB has thus far refused to do out of concern for the
`
`statutory time period within which to issue a final written decision. A limited postponement of
`
`the trial dates for these cases until after March 17, 2017 is efficient for all parties involved.
`
`I.
`
`A Stay Will Unquestionably Result in Simplification of Issues
`
`A.
`
`Issue Simplification Factor Does Not Require a Complete Overlap
`
`There can be no reasonable debate that a stay will simplify—if not entirely resolve—
`
`1
`Unless otherwise stated, all docket entry citations are to Civil Action No. 13-2109.
`
`
`
`
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 7 of 18 PageID #: 12497
`
`
`issues with respect to the ’974 Patent. The IPR covers every claim asserted in this case. Plaintiffs
`
`propose, without any support, that “Plaintiffs are likely to win on at least some of the claims of
`
`the ’974 Patent.” Pl. Resp. (D.I. 300), at 3. But this is not “likely.” By granting the petition for
`
`inter partes review, the PTAB has already determined that there is “a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35
`
`U.S.C. § 314(a). This new, higher standard for initiating a review results in an “even higher
`
`likelihood than under the prior standard that the issues in this action will be simplified.” See
`
`Semiconductor Energy Lab. Co. v. Chimei Innulox Corp., No. 12-21, 2012 U.S. Dist. LEXIS
`
`186322, at *7 (C.D. Cal. Dec. 19, 2012).
`
`Likewise, Plaintiffs inaccurately presuppose that a stay would not simplify the issues
`
`with respect to the ’370 Patent because four of six asserted claims (claims 1, 4, 8, and 13) are not
`
`subject to the pending IPR. Pl. Resp. (D.I. 300), at 1. However, “there is no requirement that the
`
`issues in the IPR be identical to those in the litigation” to establish issue simplification favoring a
`
`stay.2 There is considerable similarity between the asserted claims subject to the IPR on the ’370
`
`Patent (claims 29 and 47) and those asserted claims not subject to any pending IPRs. See Ex. F
`
`(Chart Highlighting Similarity of Claim Language for the ’370 Patent). In fact, the claims now
`
`subject to the IPR share 97% of the same claim language with the other claims remaining in the
`
`litigation, differing only in the use of the phrase “are of a different type” versus “vary in a
`
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc., No. 12-cv-01107-GMS,
`2
`2014 U.S. Dist. LEXIS 47430, at *20 (D. Del. Apr. 7, 2014); see also Nexans, Inc. v. Belden,
`Inc., No. 12-1491-SLR-SRF, 2014 U.S. Dist. LEXIS 20116, at *11 (D. Del. Feb. 19, 2014) (“[A]
`complete overlap of the issues in the litigation and the IPR is not required to establish
`simplification of the case.”), adopted by 2014 U.S. Dist. LEXIS 32322 (D. Del., Mar. 12, 2014);
`Neste Oil OYJ v. Dynamic Fuels, LLC, No. 12-1744, 2013 U.S. Dist. LEXIS 92416, at *15 (D.
`Del. July 2, 2013) (“Finally, while the court recognizes that this case likely presents certain
`questions that simply cannot be addressed through inter partes review, it notes that the ‘issue
`simplification’ factor does not require complete overlap.”).
`
`2
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 8 of 18 PageID #: 12498
`
`
`different way or manner.” See id.
`
`Thus, although the ’370 Patent IPR involves two of six asserted claims, it nevertheless
`
`will address the overwhelming majority of claim language at issue in all six claims asserted in
`
`this case. The Court will therefore benefit from the PTAB’s analysis, expertise, and final
`
`decision, which stand to impact and simplify—for all asserted ’370 Patent claims—issues
`
`implicating expert discovery, dispositive motions, and trial. See Princeton Digital Image Corp. v.
`
`Konami Digital Entm’t, Inc., No. 12-cv-1461-LPS-CJB, 2014 U.S. Dist. LEXIS 61555, at *8 (D.
`
`Del. Jan. 15, 2014) (“All but six of the 23 patent claims are at issue in the IPR request, and all
`
`but three of the claims asserted in the Ubisoft Action are a part of that request. While it is
`
`difficult to predict the outcome of an IPR proceeding in advance, with such a high percentage of
`
`the patent’s claims (and of the asserted claims in at least the Ubisoft Action) potentially at issue
`
`before the PTO, there will likely be notable simplification of issues if stay is granted and the IPR
`
`commences.”); Mission Abstract Data L.L.C. v. Beasley Broad. Grp., Inc., No. 11-176-LPS,
`
`2011 U.S. Dist. LEXIS 130934, at *7 (D. Del. Nov. 14, 2011) (granting stay pending
`
`reexamination, where five of the six claims asserted in the litigation were rejected in initial PTO
`
`office actions); Pegasus Dev. Corp. v. DirecTV, Inc., No. 00-1020-GMS, 2003 U.S. Dist. LEXIS
`
`8052, at *6 (D. Del. May 14, 2003) (granting a stay where a reexamination request had been
`
`granted for only one of six patents-in-suit because “a stay may result in a simplification or
`
`reduction of issues for the court’s consideration”). The above facts well demonstrate that a stay
`
`is warranted here.3
`
`
`3
`Plaintiffs’ suggestion that LG has taken inconsistent positions across its cases is without
`merit. As an initial matter, Plaintiffs neglect to include in their brief the fact that, in the
`referenced case, LG did not oppose a partial stay with respect to one of the asserted patents. See
`LG Electronics, Inc., et al. v. Toshiba Samsung Storage Technology Korea Corp., C.A. No. 12-
`1063-LPS-CJB, at 1 (D. Del. Dec. 11, 2015) (D.I. 92) (attached to Plaintiffs’ Opposition as Ex.
`
`3
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 9 of 18 PageID #: 12499
`
`
`B.
`
`Defendants’ Proposed Estoppel Will Simplify Issues
`
`Defendants’ proposed estoppel has previously been found by this Court to favor granting
`
`a stay. See CallWave Commc’ns, LLC v. AT&T Mobility, LLC, et al., No. 12-1701-RGA, 2015
`
`WL 1284203, at *1 (D. Del. Mar. 18, 2015) (“The Court finds that the first factor favors a
`
`stay…Defendants have stipulated that they will not assert as prior art any prior art combinations
`
`that are relied upon by the PTAB.”). Under Defendants’ proposal, the number of references and
`
`combinations to be addressed by experts and by the parties at trial would necessarily decrease as
`
`a result of a stay. Although Plaintiffs argue that this still allows Defendants to assert some prior
`
`art in the case (including prior art products), Pl. Resp. (D.I. 300), at 2, this is no different than
`
`most all instances where cases are stayed pursuant to an IPR. The estoppel applied rarely (if
`
`ever) renders moot all invalidity defenses.
`
`II.
`
`
`
`A Stay Will Not Unduly Prejudice or Present a Tactical Disadvantage to Plaintiffs
`
`Whether a plaintiff will be unduly prejudiced by a stay “focuses on the patentee’s need
`
`for an expeditious resolution of its claim.” Virtual Agility Inc. v. Salesforce.com, Inc., 759 F.3d
`
`1307, 1318 (Fed. Cir. 2014). Plaintiffs can establish no such need here because, inter alia, they
`
`are non-practicing entities asserting expired patents. These facts weigh heavily in favor of a stay.
`
`A.
`
`A Stay Until the IPRs are Resolved Poses No Real Concern
`
`
`
`Plaintiffs claim undue prejudice as a result of being subject to a “potentially indefinite
`
`stay based on serial IPRs filed against the patent-in-suit” filed by third parties. Pl. Resp. (D.I.
`
`300), at 3. Plaintiffs’ fear is unsupported. There is nothing indefinite about the newly instituted
`
`IPRs, which will result in final decisions by March 17, 2017. Plaintiffs’ assertion that a stay
`
`would be “indefinite” and deprive them of a Federal Court forum is also baseless and Plaintiffs’
`
`
`A). Furthermore, the circumstances of the case cited by Plaintiffs, which involved other patents
`and other procedural postures and scheduling situations, differ considerably from those here.
`
`4
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 10 of 18 PageID #: 12500
`
`
`reliance on Intellectual Ventures I LLC v. Xilinx, Inc., No. 10-cv-065, 2014 WL 906551, at *2
`
`(D. Del. Mar. 5, 2014); Pl. Resp. (D.I. 300), at 3, is misplaced. Intellectual Ventures dealt with
`
`reexaminations, which progress far more slowly and last far longer than IPR proceedings.
`
`Intellectual Ventures I, 2014 WL 906551, at *1.
`
`
`
`Even if additional IPRs were filed (which is unlikely unless Plaintiffs sue yet more
`
`companies), Plaintiffs’ claims of undue prejudice are overstated. “[T]he stricter standard for
`
`instituting [IPR] review suggests a greater likelihood that the PTO will cancel as least some of
`
`the challenged claims.” Neste Oil OYJ, 2013 U.S. Dist. LEXIS 92416, at *14; see also 35 U.S.C.
`
`§ 314(a). So, any instituted IPRs stand only to further narrow this case and save judicial and
`
`party resources. This outweighs any interest Plaintiffs have in the specific timing of a strictly
`
`monetary recovery. Regardless, Defendants have sought a stay pending the IPRs with final
`
`decisions due in under a year. The specter of some future, hypothetical event that has not
`
`happened cannot be used to manufacture prejudice.
`
`
`
`Defendants submit that, in view of the foregoing, staying the case now to bridge the
`
`temporal gap between the filing of this motion and the final decisions on the instituted IPRs is
`
`the most efficient result. Defendants have also, however, moved in the alternative for a limited
`
`continuance of the trial dates until after final decisions in the IPRs are expected. Such a limited
`
`postponement of trial completely addresses Plaintiffs’ concern of an indefinite stay.
`
`
`
`B.
`
`The Timing of Defendants’ Request Favors a Stay
`
`
`
`Defendants filed their renewed motion to stay a mere one week after the PTAB issued
`
`institution decisions on non-party K.J. Pretech’s IPRs on the remaining patents-in-suit.
`
`Defendants acted as promptly as possible after the PTAB granted K.J. Pretech’s IPR petitions in
`
`order to avoid causing any prejudice or wasting any resources.
`
`5
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 11 of 18 PageID #: 12501
`
`
`
`
`Moreover, contrary to Plaintiffs’ argument, the filing of these IPRs cannot suggest an
`
`unfair tactical advantage or dilatory motive on the part of Defendants because they were filed by
`
`a third party, not Defendants. Plaintiffs’ assertions that the IPRs were “file[d] at Defendants’
`
`behest” is unsupported lawyer argument, which has already been rejected by the PTAB. Exs. B-
`
`C to Defendants’ Opening Brief (Institution Decisions) (rejecting Plaintiffs’ argument that K.J.
`
`Pretech is somehow in privity with Defendant LG Display concerning these petitions).
`
`
`
`Plaintiffs’ argument that a stay is disfavored because less than a month remains until fact
`
`discovery closes also fails. Cf. Pl. Resp. (D.I. 300), at 4. The close of fact discovery means there
`
`will be no risk of prejudice caused by evidentiary staleness. Moreover, in view of the fact that
`
`the two remaining patents-in-suit have expired, there would be no need to reopen fact discovery
`
`following a stay. As discussed in Defendants’ Opening Brief, moving forward with expert
`
`discovery is likely to be exceptionally costly for the parties, as well as likely to result in
`
`substantial motion practice for the Court, given corresponding Daubert motions or motions to
`
`strike. Plaintiffs still allege infringement of over 1,000 accused products and currently rely on
`
`hundreds of infringement claim charts. Defendants’ first trial is not scheduled for more than
`
`seven months until December 5, 2016 (D.I. 288), which is only one week prior to the December
`
`13, 2016 oral arguments in the newly instituted IPRs. Moreover, final written decisions in the
`
`IPRs are due by March 17, 2017, a little over three months after the current trial date.
`
`The Status of the IPRs Favors a Stay
`C.
`The PTAB will issue Final Decisions in the IPRs at issue no later than March 17, 2017,4
`
`
`
`mere months after the first trial in these cases (and mere days or weeks after VIZIO’s or
`
`
`4
`Indeed, the same Panel assigned to the K.J. Pretech IPRs has issued final decisions prior
`to the statutory deadline in other recent IPR proceedings concerning IDT Patents. Specifically, in
`IPR2014-01362 (U.S. Patent No. 7,384,177), the Panel issued its final decision on February 8,
`2016, even though it was not statutorily due until March 2, 2016, and in IPR2014-01096 (’370
`
`6
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 12 of 18 PageID #: 12502
`
`
`Lenovo’s trials). See Ex. I (Excerpts of March 29, 2016 Discovery Conference Tr.) at 180:15-21
`
`(stating trials may occur in “February, March, something like that”). Plaintiffs attempt to turn
`
`this timeline on its head, asserting that, because the IPRs were instituted recently, this weighs
`
`against a stay. But, the timing here is precisely why a stay makes sense—the March 2017 rulings
`
`from the PTAB stand to potentially negate and supersede any prior jury findings. See Fresenius
`
`USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1336-37, 1347 (Fed. Cir. 2013).5 Absent a stay,
`
`there is a likelihood that the Court could hold one or even multiple trials here only to have that
`
`work undone in March. Thus, the timing of the IPRs favors a stay of these cases.
`
`
`
`Plaintiffs assert that, if final judgment is reached first in the LG case, it would moot the
`
`PTAB’s determination. But this is not feasible based on the above timing of the proceedings. To
`
`take precedence over the PTAB decision, the “litigation [must be] entirely concluded so that
`
`[the] cause of action [against the infringer] was merged into a final judgment ... one that ‘ends
`
`the litigation on the merits and leaves nothing for the court to do but execute the judgment.’”
`
`Fresnius, 721 F.3d at 1341 (quoting Mendenhall v. Barber–Greene Co., 26 F.3d 1573, 1580
`
`(1994)). Given the proximity in time between the current trial schedule, likely post-trial briefing,
`
`and the timing of the expected PTAB decision, it is highly probable that the PTAB decisions will
`
`issue before any final judgment is reached here. To the extent the PTAB determinations issue
`
`
`Patent), the Panel issued its final decision on December 18, 2015, even though it was not
`statutorily due until January 13, 2016. Ex. G (Final Written Decision for IPR2014-01362), Ex. H
`(Final Written Decision for IPR2014-01096).
`5
`Staying the litigation or postponing trial is also appropriate in view of scheduling
`concerns recently raised by Plaintiffs. During a scheduling hearing with the PTAB for the K.J.
`Pretech IPRs, Plaintiffs informed the PTAB that the December 13, 2016 hearing date conflicted
`with the LG trial scheduled for December 5, 2016 and requested that PTAB delay its hearings on
`the IPR proceedings. Ex. J (PTAB Order re conduct of proceedings). The PTAB informed
`Plaintiffs that IPR proceedings must be completed within a statutory time period and, thus, that it
`is proper to first seek relief for such conflict from the District Court rather than the PTAB.
`Accordingly, a grant of the requested stay or postponement of trial until after March 17, 2017
`would also address the concern of Plaintiffs.
`
`7
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 13 of 18 PageID #: 12503
`
`
`following final judgment in the LG case, but prior to final judgment in the Lenovo and VIZIO
`
`cases (which are not expected to go to trial until February or March), it could potentially lead to
`
`the inequitable result that LG be held liable for infringement while Lenovo and VIZIO be held
`
`not liable, although the asserted patents, claims, and even accused components are virtually
`
`identical across the cases. Thus, the status of the IPRs favors a stay of these cases. If the Court
`
`does not believe a full stay is appropriate, the issue of conflicting District Court and PTAB
`
`decisions, and of conflicting decisions as between Defendants here, could be avoided by a short
`
`continuance of the trial date until after final determination on the IPRs.
`
`III. The Amount of Work Remaining To Be Done Favors a Stay
`
`
`
` As discussed above, there are substantial tasks to be completed in these cases between
`
`now and the final resolution of the IPRs, such as expert discovery, dispositive motions, trial
`
`preparation, and trial. Even if work on initial expert reports has begun, a considerable amount of
`
`work will remain to be done on responsive and reply reports, as well as with respect to
`
`dispositive motions, Daubert motions, trial preparation, and trial. Trial in the first case is set to
`
`begin on December 5, 2016 (D.I. 288), only one week prior to the December 13, 2016 oral
`
`arguments and less than four months before the final decisions in the newly instituted IPRs are
`
`expected on March 17, 2017.
`
`
`
`Courts in this District have found a stay appropriate in cases that have progressed through
`
`the close of fact discovery. See, e.g., General Electric Company v. Vibrant Media, Inc., Case No.
`
`1:12-cv-00526-LPS, D.I. 91, slip op. at 2 (D. Del. Dec. 4, 2013) (“Additionally, the Court will
`
`permit fact discovery to be completed—reducing any risk of evidentiary staleness that might
`
`otherwise be present during the pendency of the stay—but will allow the parties to avoid the
`
`expense of expert discovery until after the results of the IPR are known.”); SoftView LLC v.
`
`Apple Inc., No. 12-cv-989-LPS, 2013 U.S. Dist. LEXIS 125900, at *11 (D. Del. Sept. 4, 2013)
`
`8
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 14 of 18 PageID #: 12504
`
`
`(“[W]hile the parties and the Court have dedicated substantial time and resources to this case—
`
`and only this case can resolve all of the patent-related disputes among the parties—the Court
`
`believes, under the circumstances, it is appropriate to allow the inter partes review a reasonable
`
`period to conclude before launching the parties into the expense of expert discovery.”).
`
`Accordingly, it is not “simply too late,” as Plaintiffs argue, and the timing of Defendants’ request
`
`favors a stay.
`
`
`
`Although Plaintiffs repeatedly assert in their Opposition that the case has progressed too
`
`far for a stay, the only material harm they cite that would result from a stay is that their experts
`
`purportedly may later have to re-familiarize themselves with case information. Setting aside the
`
`speculative and limited nature of this supposed harm, it will be dwarfed by the expense of
`
`preparing for and holding a trial on invalid patent claims. The risk of such harm would be even
`
`further minimized if the Court chose to instead postpone trial until after final decisions of the
`
`IPRs. The parties’ experts will have to re-familiarize themselves regardless when preparing for
`
`trial, the only question is whether this would occur prior to trial in December or in March.
`
`IV. A Stay Is Appropriate in View of Plaintiffs’ Actions Following Resolution of
`Defendants’ Previous Motion for Stay
`
`While Plaintiffs assert that “Plaintiffs properly filed the new lawsuits” (Pl. Resp. (D.I.
`
`300), at 10), Plaintiffs have blatantly circumvented the Court’s prior order to either dismiss
`
`certain patents or the entire case would be stayed. See Oct. 19, 2015 Transcript at 70:24-71:25.
`
`Had the Court been aware of Plaintiffs’ plan to almost immediately reassert the dismissed
`
`patents, it is likely that the Court would have entered a stay in response to Defendants’ original
`
`motion. See MiiCs & Partners America Inc. v. Funai Electric Co. Ltd. et al., Case No. 1:14-cv-
`
`00804-RGA, D.I. 100, slip op. at 2 (Feb. 25, 2016) (“The one additional condition I would
`
`impose is that any dismissed patents and dismissed claims cannot be filed as part of a new
`
`9
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 15 of 18 PageID #: 12505
`
`
`lawsuit in any court until either: (1) at least one of the non-dismissed patent claims has gone to
`
`verdict at trial, or (2) all of the non-dismissed patent claims have been resolved at the trial court
`
`level by other means.”). Therefore, Plaintiffs’ improper actions demonstrate that a stay here is
`
`appropriate. This is true regardless of how Defendants have responded to the new lawsuits.
`
`V.
`
`
`
`CONCLUSION
`
`For the foregoing reasons, and those expressed in D.I. 280, the relevant factors favor a
`
`stay. Accordingly, Defendants respectfully request that the Court grant the instant motion and
`
`stay all proceedings pending final exhaustion of the IPRs of the remaining patents-in-suit. In the
`
`alternative, Defendants request that the Court move back the December 5, 2016 trial date for the
`
`first case (D.I. 288) to after March 17, 2017, when final decisions in the newly instituted IPRs on
`
`the remaining patents-in-suit are expected.
`
`10
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 16 of 18 PageID #: 12506
`
`
`Respectfully submitted,
`
`
`
`ROSS ARONSTAM & MORITZ LLP
`
` /s/ Benjamin J. Schladweiler
`David E. Ross (#5228)
`Benjamin J. Schladweiler (#4601)
`100 S. West Street, Suite 400
`Wilmington, DE 19801
`(302) 576-1600
`dross@ramllp.com
`bschladweiler@ramllp.com
`
`Counsel for Defendants LG Electronics, Inc.,
`LG Electronics U.S.A., Inc., LG Display Co.,
`Ltd., and LG Display America, Inc.
`
`11
`
`
`
`
`
`Of Counsel:
`
`Jamie B. Beaber
`Kfir B. Levy
`Baldine B. Paul
`Anita Y. Lam
`Alison T. Gelsleichter
`Tiffany A. Miller
`Michael L. Lindinger
`Saqib J. Siddiqui
`Michael J. Word
`MAYER BROWN LLP
`1999 K Street NW
`Washington, D.C. 60606
`(202) 263-3000
`jbeaber@mayerbrown.com
`klevy@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`agelsleichter@mayerbrown.com
`tmiller@mayerbrown.com
`mlindinger@mayerbrown.com
`ssiddiqui@mayerbrown.com
`mword@mayerbrown.com
`
`Robert G. Pluta
`Amanda K. Streff
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`

`
`Case 1:13-cv-02109-RGA Document 310 Filed 04/21/16 Page 17 of 18 PageID #: 12507
`
`
`
`
`POTTER ANDERSON & CORROON LLP
`
` /s/ Stephanie E. O’Byrne
`Richard L. Horwitz (#2246)
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor