IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`REALTIME DATA, LLC,
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`Plaintiff,
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`v.
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`RACKSPACE US, INC., NETAPP, INC., §
`and SOLIDFIRE, INC.,
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`Defendants.
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`CIVIL ACTION NO. 6:16-CV-00961
`RWS-JDL
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendants NetApp, Inc. and SolidFire, LLC’s (collectively,
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`“NetApp”) Renewed Motion to Stay Litigation Pending Inter Partes Review. (Doc. No. 130.)
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`Plaintiff Realtime Data LLC (“Realtime”) has filed an Opposition (Doc. No. 147).
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`The Court set out many of the relevant facts relating to NetApp’s Motion in its previous
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`Order denying NetApp’s original Motion to Stay pending IPR, issued February 28, 2017. (See
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`Doc. No. 105.) Since that time, NetApp, Inc. has filed two IPR petitions with respect to the ’530
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`and ’908 Patents. See IPR2017-1195, IPR2017-01196. NetApp filed the instant renewed motion
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`on April 5, 2017. In its Motion, NetApp further represents that it agrees “to be bound by the full
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`statutory estoppel provisions of 35 U.S.C. § 315(e)(2) if the Court stays this action pending
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`resolution of the inter partes reviews filed on the patents asserted against NetApp, Inc. and
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`SolidFire, LLC.” (Doc. No. 130-2, ¶3.) A Markman Hearing is set in this matter for April 27,
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`2017. (Doc. No. 100.) Trial in this matter is set for January 22, 2018. (Id.)
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`1
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`NetApp, Inc. Exhibit 1019 Page 1
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`Also relevant to this Motion, Realtime recently settled its dispute with respect to Oracle
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`America, Inc. Realtime and Oracle jointly moved to terminate at least five IPRs asserted by
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`Oracle against Realtime’s patents.1 See IPR2016-00373; IPR2016-00374; IPR2017-00108;
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`IPR2017-00167; IPR2017-00168. The PTAB granted each of Realtime and Oracle’s requests.
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`See id.
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` The following chart illustrates the relevant status of PTAB challenges with respect to
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`each of the asserted patents.
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`U.S. Pat.
`No.
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`Any IPRs
`instituted?
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`All asserted claims
`covered by instituted
`IPR(s)?
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`All asserted claims
`covered by
`instituted IPR(s) or
`IPR petition(s)?
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`Is NetApp a
`petitioner in
`any IPRs?2
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`7,378,992 Yes
`(FD3 due 11/1/17)
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`Yes
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`7,415,530 Yes
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`(FD due 11/1/17)
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`8,643,513 Yes
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`(FD due 11/1/17)
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`9,116,908 Yes
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`No
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`(Claim
`covered)
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`Yes
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`No
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`20
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`not
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`Yes
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`Yes
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`Yes
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`Yes
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`No
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`Yes
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`No
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`Yes
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`(FD due 11/4/17)
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`(Claim 3 not covered)
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`9,054,728 No4
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`No claims covered
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`No (Claim 17 not
`covered)
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`No5
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`1 Oracle has also filed two other IPR petitions against Realtime’s ’530 and ’908 Patents. See IPR2016-01671;
`IPR2016-01672. However, the PTAB recently granted Oracle’s Motion for Joinder of these IPRs with IPRs filed by
`Dell, Inc. et al. See IPR2016-00972; IPR2016-01002. To the best of the Court’s knowledge, Oracle and Realtime
`have not sought termination of these IPRs.
`2 NetApp has not joined or petitioned any IPRs that are instituted at this time.
`3 “FD” stands for Final Decision. The PTAB must issue a Final Decision within one year of the date an IPR petition
`is instituted. 35 U.S.C. § 316(a)(11).
`4 For the two patents that have not yet received any institution decisions, Final Decisions would not be expected
`until approximately May or June 2018 at the earliest.
`5 NetApp has expressed its intent to file an IPR petition that will also cover Claim 17 of the ’728 Patent by the end
`of April 2017. However, it has not yet done so. Thus, the Court does not consider this representation in its analysis.
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`2
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`NetApp, Inc. Exhibit 1019 Page 2
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`7,161,506 No
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`No claims covered
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`Yes
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`No
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`In deciding whether to stay a given action, courts frequently consider three factors:
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`(1) whether the 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
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`(3) whether discovery is complete and whether a trial date has been set. Soverain, 356 F.Supp.2d
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`at 662.
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`Even a quick glance at the chart above indicates the complex status of PTAB proceedings
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`with respect to NetApp and the asserted patents in this case. Given this complexity, it is not at
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`all clear that a stay would simplify the issues and trial in this case. A significant number of
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`asserted claims (approximately one third) are not subject to instituted IPRs. Further, at least one
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`claim is not subject to an IPR petition at all. The Court’s concerns are somewhat lessened by the
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`fact that the ’728 and ’506 Patents share a common specification and claim similar subject matter
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`with some of the asserted patents subject to instituted IPRs. However, particularly given that
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`there is at least one claim not subject to IPR petition at all, at this time there is no possibility that
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`the IPR proceedings could fully resolve patent validity.
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`Further, Oracle’s recent settlement with Realtime and those parties’ Joint Motions to
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`Terminate IPRs highlight the fact that for parties who are not actively participating in IPR
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`proceedings, statutory estoppel alone may complicate rather than simplify district litigation.
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`Given concerns regarding the applicability and extent of full statutory estoppel, a defendant’s
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`active participation in IPR proceedings is an important consideration in the Court’s analysis.
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`Since the Order denying NetApp’s previous Motion to Stay, NetApp has taken a more active role
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`in IPR proceedings, specifically by filing IPR petitions against two of the asserted patents.
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`However, Realtime is asserting six patents in this action. NetApp has failed to take an active
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`3
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`NetApp, Inc. Exhibit 1019 Page 3
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`role in IPR proceedings against the remaining four of these six patents, whether by seeking
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`joinder of an existing IPR or filing its own IPRs.
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`As to undue prejudice, Oracle and Realtime’s Motions to Terminate show that a third
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`party simply agreeing to be bound by statutory estoppel is no guarantee that the third party will
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`actually be estopped from asserting grounds that were raised in an instituted IPR proceeding.
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`Without this guarantee of a Final Determination and the corresponding estoppel, a stay will
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`result in at least some prejudice to Realtime.
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`Finally, this matter is no longer in its “nascent stages.” The parties are now on the eve of
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`a Markman hearing. Indeed, the parties have expended significant resources in litigating
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`disputes raised by NetApp, including its Motion to Strike a Claim Construction Expert
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`Declaration and Motion to Strike Realtime’s Infringement Contentions. These considerations
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`also factor into Realtime’s prejudice. NetApp’s argument that the Court should give weight to
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`the earlier timing of its first Motion to Stay is unpersuasive. NetApp filed that Motion solely in
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`reliance on IPR petitions filed by other entities, not on the basis of any of its own efforts.
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`The Court acknowledges that NetApp adjusted its litigation strategy in response to the
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`Court’s previous Order denying NetApp’s Motion to Stay pending IPR by 1) filing two IPR
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`petitions and 2) agreeing to statutory estoppel with respect to IPR petitions filed by other entities.
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`However, this matter involves asserted claims from six patents at a wide range of stages in both
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`PTAB proceedings and district court litigation. The status of Realtime’s patents is further
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`complicated by NetApp’s decision to participate in IPRs with respect to just two of those six
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`patents, and NetApp’s ability to continue filing IPRs if it so chooses until at least June 29, 2017
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`(one year from the date Realtime filed suit). The Court concludes that litigation should proceed
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`4
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`NetApp, Inc. Exhibit 1019 Page 4
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`until there is more certainty regarding issue simplification and lack of undue prejudice in this
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`matter.
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`Accordingly, the Court DENIES NetApp’s Renewed Motion to Stay Litigation Pending
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`Inter Partes Review. (Doc. No. 130.)
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` So ORDERED and SIGNED this 24th day of April, 2017.
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`5
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`NetApp, Inc. Exhibit 1019 Page 5
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