Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 1 of 29 PageID #: 3540
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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` §
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`IOENGINE, LLC,
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`Plaintiff,
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`v.
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`Defendant.
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`PAYPAL HOLDINGS, INC.,
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`Civil Action No. 18-452-WCB
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`Civil Action No. 18-826-WCB
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`§
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`______________________________________ §
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`IOENGINE, LLC,
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`Counterclaim Plaintiff,
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`v.
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`INGENICO INC.,
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`INGENICO CORP., and
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`INGENICO GROUP, S.A.,
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`Counterclaim Defendants.
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`______________________________________ §
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`INGENICO INC.,
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`Plaintiff,
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`v.
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`IOENGINE, LLC,
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`Defendant.
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`PayPal Ex. 1059, p. 1
`PayPal v. IOENGINE
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`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 2 of 29 PageID #: 3541
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`MEMORANDUM OPINION AND ORDER
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`
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`Before this Court are motions by Ingenico Inc., Ingenico Corp., and Ingenico Group S.A.
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`(collectively, “Ingenico”) and by PayPal Holdings, Inc., (“PayPal”) for stays of Civil Action Nos.
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`18-452 and 18-826 pending inter partes review (“IPR”) in IPR2019-00416 by the Patent Trial and
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`Appeal Board (“PTAB”). The motions are granted.
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`BACKGROUND
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`IOENGINE, LLC (“IOENGINE”) is the assignee of U.S. Patent Nos. 8,539,047 (“the ’047
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`patent”), 9,059,969 (“the ’969 patent”), and 9,774,703 (“the ’703 patent”), each of which is entitled
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`“Apparatus, Method and System for a Tunneling Client Access Point.” IOENGINE LLC v. PayPal
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`Holdings, Inc., No. 18-cv-452 (“PayPal Action”), Dkt. No. 1, at 4. The applications that led to the
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`’047, ’969, and ’703 patents were continuation applications from U.S. Patent Application No.
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`10/807,731, which issued as U.S. Patent No. 7,861,006 (“the ’006 patent”). Id.; PayPal Action,
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`Dkt. No. 60, at 1 n.1.
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`
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`On March 23, 2018, IOENGINE filed a complaint against PayPal in a case designated as
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`Civil Action No. 18-452. The complaint alleged that PayPal had infringed the ’047, ’969, and
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`’703 patents in connection with mobile credit card reader products that included products that
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`Ingenico, Inc., had supplied to PayPal. PayPal Action, Dkt. No. 1, at 4; Ingenico Inc. v.
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`IOENGINE LLC, Inc., No. 18-cv-826 (“Ingenico Action”), Dkt. No. 1, at 2–3. The filing of the
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`complaint against PayPal triggered an indemnity request by PayPal to Ingenico Inc. Ingenico
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`Action, Dkt. No. 1, at 3.
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`
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`In response, on June 1, 2018, Ingenico Inc. filed a declaratory judgment action against
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`IOENGINE, in a case designated as Civil Action No. 18-826. Ingenico Inc. sought a declaration
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`of non-infringement of the three patents-in suit in the PayPal Action. IOENGINE filed an answer
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`
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`2
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`PayPal Ex. 1059, p. 2
`PayPal v. IOENGINE
`
`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 3 of 29 PageID #: 3542
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`to Ingenico Inc.’s declaratory judgment complaint on August 17, 2018, and included counterclaims
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`alleging infringement of the same three patents not only by Ingenico Inc., but also by two related
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`companies, Ingenico Corp. and Ingenico Group S.A.
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`
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`The three asserted patents contain a total of 189 claims. IOENGINE’s infringement
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`contentions, served on March 1, 2019, asserted 20 of those 189 claims: claims 1-2, 4, 12, and 25
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`of the ’047 patent; claims 2-4 and 7 of the ’969 patent; and claims 55-57, 61, 100, 104-06, 110-11,
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`and 123 of the ’703 patent. Ingenico Action, Dkt. No. 104, at 2.
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`
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`Between December 2018 and April 2019, PayPal and Ingenico separately filed a total of
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`12 petitions for inter partes review. Collectively, the petitions challenged all the asserted claims
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`of the three patents in suit and certain other claims of those patents as well. The tables below
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`summarize the subject matter and timeline for each of those IPR petitions:
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`Ingenico IPRs
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`Challenged
`Patent
`
`Challenged
`Claims
`
`Filing
`Date
`
`’047 patent
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`1-21, 23-25, 27, 28 12/17/2018
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`Institution
`Decision
`Date/Due
`Date
`07/15/2019
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`Final
`Written
`Decision
`Due Date
`07/15/2020
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`’703 patent
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`’969 patent
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`’703 patent
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`1-54
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`01/22/2019
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`08/12/2019
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`08/12/2020
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`03/25/2019
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`10/16/2019
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`10/16/2020
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`04/05/2019
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`10/10/2019
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`10/10/2020
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`1-8, 10-16, 19-21,
`24-29
`55-63, 65-72, 74,
`75, 77, 78, 81-87,
`89, 90, 92-98, 100,
`101, 103-112, 114-
`121, 123, 124, 126-
`129
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`
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`3
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`IPR
`Petition
`Number
`
`IPR2019-
`00416
`IPR2019-
`00584
`IPR2019-
`00879
`IPR2019-
`00929
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`
`
`
`
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`PayPal Ex. 1059, p. 3
`PayPal v. IOENGINE
`
`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 4 of 29 PageID #: 3543
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`PayPal IPRs
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`Challenged
`Patents
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`Challenged
`Claims
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`Filing Date
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`’047 patent
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`1-9, 12-16, 18-31
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`03/29/2019
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`Institution
`Decision
`Date/Due
`Date
`10/17/2019
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`Final
`Written
`Decision
`Due Date
`10/17/2020
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`’047 patent
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`’047 patent
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`’047 patent
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`1, 7, 9-11, 14, 16-
`17
`1-4, 6-9, 12-16,
`18-31
`5, 10-11, 17
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`03/29/2019
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`10/17/2019
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`10/17/2020
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`03/29/2019
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`11/10/2019
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`11/10/2020
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`03/29/2019
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`11/10/2019
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`11/10/2020
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`’969 patent
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`1-22, 24-29
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`04/04/2019
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`12/06/2019
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`12/06/2020
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`’969 patent
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`1-22, 24-29
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`04/04/2019
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`12/06/2019
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`12/06/2020
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`’703 patent
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`IPR2019-
`00931
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`’703 patent
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`04/08/2019
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`11/15/2019
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`11/15/2020
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`04/08/2019
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`11/15/2019
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`11/15/2020
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`55-72, 74-75, 77-
`79, 81-87, 89-90,
`92-98, 100-101,
`103-121, 123-124,
`126-129
`55-72, 74-75, 77-
`79, 81-87, 89-90,
`92-98, 100-101,
`103-121, 123-124,
`126-129
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`IPR
`Petition
`Number
`
`IPR2019-
`00884
`IPR2019-
`00885
`IPR2019-
`00886
`IPR2019-
`00887
`IPR2019-
`00906
`IPR2019-
`00907
`IPR2019-
`00930
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`
`
`
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`The PTAB has already acted on two of Ingenico’s IPR petitions. On July 15, 2019, the
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`PTAB granted the petition in IPR2019-00416, and on August 12, 2019, it denied the petition in
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`IPR2019-00584.1
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`
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`In its decision instituting review in IPR2019-00416, the PTAB construed the terms
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`“interactive user interface” and “communicate through the terminal network interface with the
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`communications network node”/ “cause a communication to be sent through the terminal network
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`1 As PayPal points out, Dkt. No. 114, at 4, IPR2019-00584 sought review of claims are
`not at issue in the two district court actions.
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`
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`4
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`PayPal Ex. 1059, p. 4
`PayPal v. IOENGINE
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`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 5 of 29 PageID #: 3544
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`interface to a communications network node,” which are two of the eight terms that the parties
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`identified as disputed terms in their Joint Claim Construction Chart in the district court cases.
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`Ingenico Inc. v. IOENGINE, LLC, No. IPR2019-00416, Paper 20 (P.T.A.B. July 15, 2019); PayPal
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`Action, Dkt. No. 91, at 1–2.
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`
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`On July 17, 2019, Ingenico moved for a stay of the Ingenico Action pending the resolution
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`of IPR2019-00416. Ingenico Action, Dkt. No. 103. Thereafter, on July 30, 2019, PayPal moved
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`for a stay of the PayPal Action pending the resolution of the same IPR. PayPal Action, Dkt. No.
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`93. At the current stage of the proceeding, the parties are engaged in claim construction briefing
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`and have conducted a significant amount of discovery. The following case milestones, however,
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`lie ahead:
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`(1) a claim construction hearing is scheduled for August 29, 2019;
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`
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`(2) fact discovery is continuing and does not close until October 30, 2019;
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`(3) all depositions remain to be taken;
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`(4) expert discovery has yet to begin; it is scheduled to close on February 18, 2020;
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`(5) a pretrial conference is scheduled for July 20, 2020; and
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`(6) trials in the two cases are scheduled to be conducted in July and August 2020.
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`See PayPal Action, Dkt. No. 49; Ingenico Action, Dkt. No. 57; see also PayPal Action, Dkt. No.
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`94, at 5; Ingenico Action, Dkt. No. 104, at 2.
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`DISCUSSION
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`
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`The question whether a stay of district court proceedings should be granted when inter
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`partes review is instituted on some or all of the claims at issue in the district court litigation has
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`arisen frequently since the enactment of the Leahy-Smith America Invents Act (“AIA”) in 2011.
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`5
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`PayPal Ex. 1059, p. 5
`PayPal v. IOENGINE
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`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 6 of 29 PageID #: 3545
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`The principles governing the question whether to stay the case pending inter partes review have
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`been developed by courts in numerous decisions since that time.
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`A district court has inherent power to control its own docket, including the power to stay
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`the proceedings before it. See Clinton v. Jones, 520 U.S. 681, 706 (1997). In particular, the
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`question whether to stay proceedings pending review by the Patent and Trademark Office (“PTO”)
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`of the validity of the patent or patents at issue in the lawsuit is a matter committed to the district
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`court’s discretion. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (request
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`for a stay pending inter partes reexamination). A stay is particularly justified when “the outcome
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`of a PTO proceeding is likely to assist the court in determining patent validity or eliminate the
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`need to try infringement issues.” NFC Tech. LLC v. HTC Am., Inc., Case No. 2:13-cv-1058, 2015
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`WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015) (citing cases).
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`District courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of the patent in suit: “(1) whether granting the stay will simplify the
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`issues for trial; (2) the status of the litigation, particularly when discovery is complete and a trial
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`date has been set; and (3) whether a stay would cause the non-movant to suffer undue prejudice
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`from any delay, or allow the movant to gain a clear tactical advantage.” Princeton Dig. Image
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`Corp. v. Konami Dig. Entm’t Inc., No. CV 12-1461, 2014 WL 3819458, at *2 (D. Del. Jan. 15,
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`2014) (citing cases).
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`The related context of Covered Business Methods (“CBM”) review provides guidance as
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`to the principles that apply to stay applications in the IPR setting. In the uncodified portion of the
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`AIA that was directed to CBM review proceedings, Congress set forth four factors that govern
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`whether a stay should be granted pending CBM review proceedings before the PTAB. Those four
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`factors are:
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`6
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`PayPal Ex. 1059, p. 6
`PayPal v. IOENGINE
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`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 7 of 29 PageID #: 3546
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`(A) whether a stay, or the denial thereof, will simplify the issues in question and
`streamline the trial;
`(B) whether discovery is complete and whether a trial date has been set;
`(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving
`party or present a clear tactical advantage for the moving party; and
`(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the
`parties and on the court.
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`Pub. L. No. 112-29, § 18(b)(1), 125 Stat. 284, 331 (2011). Those statutory factors largely track
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`the three factors traditionally used by courts in determining whether to grant stays pending post-
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`grant review proceedings, with a fourth factor added. The fourth factor, which requires an inquiry
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`into whether a stay will reduce the burden of litigation on the parties and the court, indicates that
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`the “burden of litigation” factor should be given special attention.
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`While the four-factor test that Congress enacted for stays in CBM proceedings does not
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`expressly extend to IPR cases, the policy considerations that apply in the two contexts are similar,
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`and the Federal Circuit has held that the fourth factor set forth in the CBM statute may properly
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`be applied to stays in IPR cases as well. See Murata Mach. USA v. Daifuku Co., 830 F.3d 1357,
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`1362 (Fed. Cir. 2016); see also Neuro Cardiac Techs., LLC v. LivaNova, Inc., Civil Action No. H-
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`18-1517, 2018 WL 4901035, at *2 (S.D. Tex. Oct. 9, 2018); Ultratec, Inc. v. Sorenson Commc’ns,
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`Inc., No. 13-cv-346, 2013 WL 6044407, at *2 (W.D. Wis. Nov. 14, 2013). The Court will therefore
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`address the “burden of litigation” factor as part of the factor directed to “simplifying the issues.”
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`The legislative history of the AIA makes it apparent that Congress intended for district
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`courts to be liberal in granting stays pending CBM review. As Senator Schumer observed
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`regarding the CBM review provision, Congress intended to place “a very heavy thumb on the scale
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`in favor of a stay being granted” once the PTAB instituted CBM review proceedings. 157 Cong.
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`Rec. S1363 (daily ed. Mar. 8, 2011) (statement of Sen. Chuck Schumer).
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`7
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`PayPal Ex. 1059, p. 7
`PayPal v. IOENGINE
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`

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`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 8 of 29 PageID #: 3547
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`Congress’s desire to enhance the role of the PTO and limit the burden of litigation on
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`courts and parties was not restricted to the CBM review context. The legislative history indicates
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`that Congress recognized that the same underlying policy considerations that apply to CBM review
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`apply to inter partes review as well. See H. Rep. No. 112-98, Part I, at 48 (2011) (statutory post-
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`grant review procedures were designed to be “quick and cost effective alternatives to litigation”);
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`157 Cong. Rec. S952 (daily ed. Feb. 28, 2011) (inter partes review was intended to provide a
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`“faster, less costly alternative[] to civil litigation to challenge patents”) (statement of Sen. Chuck
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`Grassley); id. at S5319 (daily ed. Sept. 6, 2011) (post-grant review of patents, including inter
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`partes review, was meant to be “an inexpensive substitute for district court litigation” that “allows
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`key issues to be addressed by experts in the field”) (statement of Sen. Jon Kyl). In light of the
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`parallel policies underlying the CBM and inter partes review proceedings, it is not surprising that
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`courts have applied generally similar analysis to requests for stays in both settings.
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`The benefits of inter partes review are the same as those served by CBM review: giving
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`the PTO an opportunity to reconsider patents that have become the focus of litigation, relieving
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`the courts of some of the burdens of deciding issues of obviousness and anticipation, and saving
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`the courts from having to adjudicate infringement claims based on patents of questionable validity.
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`For those reasons, courts have concluded that the “liberal policy” in favor of stays in CBM cases
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`also applies to stays pending instituted IPR proceedings. See Parsons Xtreme Golf LLC v. Taylor
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`Made Golf Co., No. CV-17-03125, 2018 WL 6242280, at *3–8 (D. Ariz. Nov. 29, 2018); Nautilus,
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`Inc. v. ICON Health & Fitness, Inc., Case No. 1:17-cv-154, 2018 WL 4215095, at *2 (D. Utah
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`Sept. 4, 2018); Qualcomm Inc. v. Apple Inc., Case No. 3:17-cv-2403, 2018 WL 4104966, at *1
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`(S.D. Cal. Aug. 29, 2018); Canfield Sci., Inc. v. Drugge, Civil Action No. 16-4636, 2018 WL
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`2973404, at *2 (D.N.J. June 13, 2018); Chrimar Sys. Inc. v. Ruckus Wireless, Inc., Case No. 16-
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`8
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`PayPal Ex. 1059, p. 8
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 9 of 29 PageID #: 3548
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`cv-186 et al., 2016 WL 5403595, at *3 (N.D. Cal. Sept. 26, 2016); Drink Tanks Corp. v.
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`GrowlerWerks, Inc., Case No. 3:16-cv-410, 2016 WL 3844209, at *2 (D. Or. July 15, 2016);
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`Gatearm Techs., Inc. v. Access Masters, LLC, Civil Action No. 14-62697, 2015 WL 13752667, at
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`*1 (S.D. Fla. July 13, 2015); Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. C-14-
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`1575, 2014 WL 3107447, at *3 (N.D. Cal. July 3, 2014); Intellectual Ventures II LLC v. Commerce
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`Bancshares, Inc., No. 2:13-cv-04160, 2014 WL 2511308, at *2 (W.D. Mo. June 4, 2014)
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`(“Although the decision to grant a stay remains firmly in the district court’s discretion, the interests
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`of judicial economy and deference to the PTO’s expertise have given rise to a ‘liberal policy in
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`favor of grant stays.’”). Summarizing the state of the law on this issue, the court in the NFC Tech.
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`case stated that “after the PTAB has instituted review proceedings, the parallel district court
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`litigation ordinarily should be stayed.” NFC Tech., 2015 WL 1069111, at *7.
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`Although the three-factor test informs the Court’s inquiry, that test is not a prescriptive
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`template. The district court retains the “discretionary prerogative to balance considerations beyond
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`those captured by the three-factor stay test.” Murata, 830 F.3d at 1362. “[U]ltimately the Court
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`must decide stay requests on a case-by-case basis.” Norman IP Holdings, LLC v. TP-Link Techs.,
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`Co., Case No. 6:13-cv-384, 2014 WL 5035718, at *2 (E.D. Tex. Oct. 8, 2014); see also Lund
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`Motion Prods., Inc. v. T-Max Hangzhou Tech. Co., Case No. SACV 17-1914, 2019 WL 116784,
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`at *2 (C.D. Cal. Jan. 2, 2019) (“the totality of the circumstances governs” (quoting Universal
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`Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1030–31 (C.D. Cal. 2013)));
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`Qualcomm Inc., 2018 WL 4104966, at *1; Image Processing Techs., LLC v. Samsung Elecs. Co.,
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`Case No. 2:16-cv-505, 2017 WL 7051628, at *1 (E.D. Tex. Oct. 25, 2017) (“motions to stay are
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`highly individualized matters”); Realtime Data LLC v., Actian Corp., Case No. 6:15-cv-463, 2016
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`U.S. Dist. LEXIS 187446, at *7 (E.D. Tex. Nov. 29, 2016); Drink Tanks Corp., 2016 WL 3844209,
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`
`
`9
`
`PayPal Ex. 1059, p. 9
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 10 of 29 PageID #: 3549
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`at *2; Wonderland Nursery Goods Co. v. Baby Trend, Inc., No. EDCV 14-1153, 2015 WL
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`1809309, at *2 (C.D. Cal. Apr. 20, 2015); PersonalWeb Techs., LLC v. Apple Inc., 69 F. Supp. 3d
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`1022, 1025 (N.D. Cal. 2014).
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`The court now turns to an assessment of each of the factors bearing on whether to grant the
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`motions for a stay.
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`I. The State of the Proceedings
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`In the two cases before the Court, claim construction briefing has been completed, and fact
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`discovery is ongoing. According to IOENGINE, “[a] stay of proceedings would interrupt both the
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`discovery and claim construction processes, processes that have already progressed significantly
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`and which would need to be restarted on the same issues upon the conclusion of IPR proceedings.”
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`Ingenico Action, Dkt. No. 109, at 19. Specifically, IOENGINE states that the parties have
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`“produced over 100,000 pages of documents, conducted more than 110 hours of review of party
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`source code, and served and responded to dozens of interrogatories, over 250 requests for
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`production, and multiple requests for admission.” PayPal Action, Dkt. No. 107, at 14. IOENGINE
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`also states that both PayPal and Ingenico have served multiple third party subpoenas, with
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`commanded response dates between May and August of 2019. Id.
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`While IOENGINE’s observations indicate that there has been significant progress in the
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`two cases, the most burdensome stages of the cases—completing discovery, preparing expert
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`reports, filing and responding to pretrial motions, preparing for trial, going through the trial
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`process, and engaging in post-trial motions practice—all lie in the future. CyWee Grp. Ltd. v.
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`Samsung Elec. Co., No. 2:17-cv-140, D.I. 331, at 13 (E.D. Tex. Feb. 14, 2019); see Smartflash
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`LLC v. Apple Inc., 621 Fed. Appx. 995, 1005 (Fed. Cir. 2015) (holding that the district court abused
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`its discretion when it denied a stay prior to trial, because “[d]espite the substantial time and effort
`
`
`
`10
`
`PayPal Ex. 1059, p. 10
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 11 of 29 PageID #: 3550
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`already spent in this case, the most burdensome task is yet to come.”). No depositions have been
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`taken, expert discovery has not begun, and the trials in the two cases are approximately a year
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`away, even assuming there is no slippage in the trial schedule. Ingenico Action, Dkt. No. 104, at
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`2. In the Court’s view, the state of the litigation cuts in favor of a stay. See CallWave Commc’ns,
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`LLC v. AT&T Mobility LLC, Civil Action Nos. 12-1702 et al., 2015 WL 1284203, at *1 (D. Del.
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`Mar. 18, 2015) (stage of the litigation favored a stay where “[d]iscovery is more advanced than
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`would be ideal, but . . . few depositions have been taken and expert discovery has not yet begun”);
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`ACQUIS, LLC v. EMC Corp., 109 F. Supp. 3d 352, 356–57 (D. Mass. 2015) (finding that the
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`“stage of the litigation” factor weighed in favor of a stay where no depositions had been taken and
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`expert discovery had not begun, “[n]otwithstanding the fact that substantial document and written
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`discovery ha[d] already occurred, and a claim construction opinion ha[d] been issued”).
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`To be sure, this case is not “in its infancy.” Nonetheless, “it appears likely that the bulk of
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`the expenses that the parties would incur in pretrial work and trial preparation are still in the
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`future.” NFC Tech., 2015 WL 1069111, at *3. The likelihood of substantial continuing pretrial
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`work by the parties (and by the Court) is increased by IOENGINE’s recent filing of a motion for
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`leave to supplement its complaint and its answer and counterclaims with a newly issued patent,
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`see Ingenico Action, Dkt. No. 118, and the parties’ disputes over email production, see Ingenico
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`Action, Dkt. No. 114, Exh. D. Therefore, the Court believes that “denying a stay because of the
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`progress of the case to this point would impose significant expenses on the parties that might be
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`avoided if the stay results in the simplification of further court proceedings.” NFC Tech., 2015
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`WL 1069111, at *3.
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`
`
`11
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`PayPal Ex. 1059, p. 11
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 12 of 29 PageID #: 3551
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`II. Prejudice
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`a. The Ingenico Action
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`In analyzing whether a plaintiff would suffer undue prejudice (and relatedly whether a
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`defendant would gain an unfair tactical advantage) if a stay were granted, courts in this district
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`have examined four factors: (1) the timing of the request for review; (2) the timing of the request
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`for a stay; (3) the status of the review proceedings; and (4) the relationship of the parties. Ethicon
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`LLC v. Intuitive Surgical, Inc., C.A. No. 17-871, 2019 WL 1276029, at *2 (D. Del. Mar. 20, 2019);
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`Contour IP Holding, LLC v. GoPro,Inc., No. CV 15-1108, 2016 WL 4474340, at *4 (D. Del. July
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`14, 2016); Princeton Dig. Image Corp., 2014 WL 3819458, at *4. In light of those factors,
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`IOENGINE makes several arguments about why granting a stay of its action against the Ingenico
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`defendants would be unduly prejudicial.
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`First, IOENGINE argues that Ingenico could have filed its IPR petitions challenging
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`IOENGINE’s patents immediately after being notified of IOENGINE’s complaint against PayPal.
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`Instead, according to IOENGINE, Ingenico “chose to invoke the power of this Court . . . [and]
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`should not now be allowed to abandon its chosen forum.” Ingenico Action, Dkt. No. 109, at 16.
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`
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`That characterization of the procedural history of the case ignores the indemnity request
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`from PayPal that prompted Ingenico to seek declaratory relief. As noted by Ingenico, “[i]t was
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`IOENGINE . . . that initiated litigation against PayPal, a customer of Ingenico, alleging
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`infringement of three products supplied by Ingenico, causing Ingenico to act.” Ingenico Action,
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`Dkt. No. 114, at 8. For that reason, the Court discounts IOENGINE’s argument that Ingenico is
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`seeking to walk away from a district court action that it filed on its own initiative.
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`
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`IOENGINE also argues that “Ingenico did not file its first petition for inter partes review
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`for more than six months after it initiated this action, and almost nine months after its customer
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`
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`12
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`PayPal Ex. 1059, p. 12
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 13 of 29 PageID #: 3552
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`and indemnitee PayPal was sued.” Ingenico Action, Dkt. No. 109, at 16 (emphasis in original).
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`According to IOENGINE, the delay in filing the initial IPR petition was a calculated maneuver.
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`On October 6, 2018, Ingenico moved to dismiss the counterclaims against Ingenico Group S.A.
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`(“Ingenico France”) for lack of personal jurisdiction. IOENGINE alleges that Ingenico,
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`“[k]nowing that naming Ingenico France as a ‘real party in interest’ in the IPR proceedings would
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`undermine its jurisdictional argument . . . [,] timed its IPR petition for the same day as the hearing
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`before the Court on its motion to dismiss—preventing IOENGINE from raising this issue before
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`the Court at oral argument.” Id. at 16–17. IOENGINE also argues that Ingenico had an
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`opportunity to seek inter partes review earlier in the case, but chose to pursue litigation and to
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`aggressively challenge IOENGINE at every turn.
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`Ingenico offers a different perspective. Ingenico argues that it was “extremely diligent” in
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`filing its IPR. Ingenico Action, Dkt. No. 114, at 7. According to Ingenico, the ’047 IPR was filed
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`before the Court entered a scheduling order, before there was any material activity in the case, and
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`six weeks before IOENGINE identified the subset of the claims (out of a possible 189) that it
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`would be asserting. See id. As for IOENGINE’s gamesmanship theory, Ingenico insists that there
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`was no dilatory motive behind the timing of the petition, and the fact that the petition was filed on
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`the same day as the hearing on the motion to dismiss was purely coincidental. Ingenico adds that
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`“[h]ad IOENGINE felt that the naming of Ingenico [France] as a real party-in-interest in the IPR
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`was material to the Court’s decision relating to personal jurisdiction, IOENGINE could have
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`brought this to the Court’s attention when that motion was pending.” Id. at 8.
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`
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`The Court is not persuaded by IOENGINE’s argument. Notwithstanding that the IPR was
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`filed on the same date that the Court held its hearing on the motion to dismiss, the facts do not
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`suggest a dilatory motive behind the timing of the petition. Because Ingenico filed its IPR petition
`
`
`
`13
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`PayPal Ex. 1059, p. 13
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 14 of 29 PageID #: 3553
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`before the Court ruled on the motion to dismiss, Ingenico remained vulnerable to attack by the
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`same “real party in interest” argument (assuming there was any force to that argument), which
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`could have been raised after the hearing and before the Court acted on the motion. The claim of
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`gamesmanship aside, the Court finds that in light of the complexity entailed in seeking inter partes
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`review, a delay of six months from the filing of the complaint is not unreasonable. NFC Tech.,
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`2015 WL 1069111, at *4 (citing cases).
`
`
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`Second, with respect to the timing of the stay request, Ingenico filed its motion for a stay
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`within three days after the ’047 IPR institution decision was published. An earlier request for a
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`stay would have been premature, as courts almost invariably deny requests for stays pending IPR
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`proceedings when the stay requests are filed before the IPR is instituted, and a pre-institution
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`request therefore would have been futile. See, e.g., Invensas Corp. v. Samsung Elecs. Co., Civil
`
`Action No. 17-1363, 2018 WL 4762957, at *6 (D. Del. Oct. 2, 2018); Universal Secure Registry,
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`LLC v. Apple Inc., Civil Action No. 17-585, 2018 WL 4486379, at *4–5 (D. Del. Sept. 19, 2018);
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`454 Life Scis. Corp. v. ION Torrent Sys., Inc., No. 15-595, 2016 WL 6594083, at *4 (D. Del. Nov.
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`7, 2016) (stay motion filed shortly after PTAB issued its institution decisions, “which is generally
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`the ideal time at which to file such a request.”). The Court finds that Ingenico diligently moved
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`for the requested stay.
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`
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`Third, with respect to the status of the review proceeding, the Ingenico IPR on the ’047
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`patent was instituted in July of this year and will presumably be completed by July 2020. See 37
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`C.F.R. § 42.100(c). In addition, institution decisions in the remaining petitions filed by Ingenico
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`and PayPal will be made between October and December of this year. Thus, while the IPRs are
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`not at an advanced stage, the potential for the IPRs to significantly affect the litigation is high. If
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`a stay is not granted, a decision as to the validity of the ’047 patent (and decisions as to the validity
`
`
`
`14
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`PayPal Ex. 1059, p. 14
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 15 of 29 PageID #: 3554
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`of the other two patents-in-suit) could come at the time of the trials in the district court actions or
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`during post-trial motions practice. The prospect that contemporaneous IPR decisions will have a
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`significant effect on the issues presented in the litigation counsels in favor of a stay. See
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`Huvepharma Eood v. Associtated British Foods, PLC, Civil Action No. 18-129, 2019 WL
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`3802472, at *1 (D. Del. Aug. 13, 2019) (“Plaintiffs contemplate having anticipation and
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`obviousness tried twice, whereas a stay will mean that those issues will only need to be tried
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`once.”).
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`
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`Fourth, as to the relationship between the parties, it is undisputed that IOENGINE is a
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`patent assertion entity and does not compete with Ingenico or PayPal. To be sure, IOENGINE’s
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`interest in the prompt enforcement of its patent rights is entitled to weight. See CyWee Grp. Ltd.
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`v. Samsung Elec. Co., No. 2:17-cv-140, D.I. 331, at 7; NFC Tech., 2015 WL 1069111, at *2.
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`However, that factor is present in every case in which a patentee resists a stay, and it is therefore
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`insufficient, standing alone, to defeat a stay motion. See BodyMedia, Inc. v. Basis Sci., Inc., No.
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`12-cv-133, 2013 WL 2462105, at *1 n.1 (D. Del. June 6, 2013); see also CyWee Grp. Ltd. v.
`
`Samsung Elec. Co., No. 2:17-cv-140, D.I. 331, at 7; CyWee Grp. Ltd. v. Huawei Device Co., Case
`
`No. 2:17-cv-495, 2018 WL 4002776, at * 3 (E.D. Tex. Aug. 22, 2018); VirnetX Inc. v. Apple Inc.,
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`Civil Action No. 6:12-cv-855, 2018 WL 398433, at *3 (E.D. Tex. Jan. 12, 2018); NFC Tech., 2015
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`WL 1069111, at *2. That is especially true for non-practicing entities, such as IOENGINE, that
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`“do[] not participate in the relevant market and will not suffer any loss of market share or erosion
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`of goodwill due to a stay.” Princeton Dig. Image Corp., 2014 WL 3819458, at *6; see also SZ
`
`DJI Tech. Co. v. Autel Robotics USA LLC, C.A. No. 16-706, 2019 WL 1244948, at *2 (D. Del.
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`Mar. 18, 2019) (“[T]he stay of proceedings with respect to a patent Autel does not practice will
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`not greatly harm Autel.”); Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc., C.A. No.
`
`
`
`15
`
`PayPal Ex. 1059, p. 15
`PayPal v. IOENGINE
`
`

`

`Case 1:18-cv-00452-WCB Document 116 Filed 08/21/19 Page 16 of 29 PageID #: 3555
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`12-cv-1107 et al., 2014 WL 1369721, at *5 (D. Del. Apr. 7, 2014) (holding that the plaintiff’s
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`status “as a non-practicing entity, rather than a market participant, suggests there is little risk that
`
`it will lose sales or goodwill in the market” if a stay is granted). The relationship of the parties
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`therefore does not cut against issuance of a stay.
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`Beyond those factors, IOENGINE argues that it “will suffer some prejudice from a stay,
`
`due to loss of [its] chosen forum, the possibility of necessary witnesses’ memories fading, and
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`negative impact on [its] ability to license the patents-in-suit.” Ingenico Action, Dkt. No. 109, at
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`18 (quoting Intellectual Ventures I LLC v. Toshiba Corp., No. Civ. 13-453-SLR/SRF, 2015 WL
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`3773779, at *2 (D. Del. May 15, 2015) (internal quotations omitted)).
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`IOENGINE’s assertion that a stay will deprive it of its chosen forum is entitled to little
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`weight. Because the IPR process has been invoked, IOENGINE will be required to defend its
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`patent rights before the PTAB without regard to whether this Court grants a stay. Moreover, given
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`that the trials in these cases are a year away—even assuming no slippage in the current schedule—
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`it is unlikely that final judgments will have been rendered in the district court actions before the
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`PTAB decides the IPR. If the challenged patent survives the IPR, IOENGINE will retain its chosen
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`forum. If not, IOENGINE’s ’047 patent will be canceled and the enforcement efforts in the district
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`court with regard to that patent will be rendered nugatory. See Fresenius USA, Inc. v. Baxter
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`International, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013). All that would be affected by granting
`
`a stay is the sequencing of the proc