Case 6:18-cv-00207-ADA Document 73 Filed 05/30/19 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF TEXAS
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`WACO DIVISION
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`p1
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`MULTIMEDIA CONTENT
`MANAGEMENT LLC,
`Plaint
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`v.
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`DISH NETWORK L.L.C.,
`Defendant.
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`CIVIL NO. 6:18-C V-00207-ADA
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`ORDER DENYING MOTION TO STAY PENDING INTER PARTES REVIEW OF U.S.
`PATENT NUMBERS 8,799A68 AND 9,465g925
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`Before the Court is Defendant Dish Network L.L.C.'s Opposed Motion to Stay Pending
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`Inter Partes Review of U.S. Patent Nos. 8,799,468 and 9,465,925. Document Number 67.
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`Plaintiff Multimedia Content Management LLC filed a Response on May 21, 2019. Document
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`Number 69. Dish filed a Reply on May 28, 2019. Document Number 71. After carefully
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`reviewing the Parties' briefs, the Court finds that Dish's Opposed Motion to Stay should be
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`denied for the following reasons.
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`Background
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`On July 25, 2018, MCM filed this action against Dish alleging the infringement of two
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`patents: U.S. Patent Nos. 8,799,468 and 9,465,925 (the "468 Patent" and the "925 Patent"
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`respectively). In Dish's Motion to Stay, Dish urges the Court to stay the proceedings in this
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`litigation for six months on the basis that it is seeking an Inter Partes Review ("IPR") which has
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`yet to be instituted. Def.'s Mot. at 1. On April 23, 2019, Dish filed two IPR petitions against all
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`asserted claims of the '468 Patent and the '925 Patent. As such, Dish seeks a short stay until the
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`United States Patent Trial and Appeal Board's ("PTAB") institution decisions, which are due by
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`Case 6:18-cv-00207-ADA Document 73 Filed 05/30/19 Page 2 of 7
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`November 2019 and thereafter during the pendency of any instituted PTAB proceeding.
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`Moreover, Dish has stated that should the PTAB not institute as to all challenged claims, then the
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`Court can revisit the stay in November 2019.
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`Legal Standard
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`A district court has the inherent power to control its own docket, including the power to
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`stay proceedings before it. See Clinton v. Jones, 520 U.S. 681, 706 (1997) ("The District Court
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`has broad discretion to stay proceedings as an incident to its power to control its own docket.").
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`flow to best manage the court's docket "calls for the exercise of judgment, which must weigh
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`competing interests and maintain an even balance." Landis v. N Am. Co., 299 U.S. 248, 254-55
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`(1936); Gonzalez v. Infostream Grp., Inc., Case No. 2:14-CV-906, 2015 WL 12910770, at *1
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`(E.D. Tex. Mar. 2, 2015). In particular, the question whether to stay proceedings pending inter
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`partes review of a patent is a matter committed to the district court's discretion. Ethicon, Inc. v.
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`Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). A stay is particularly justified when "the
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`outcome of a PTO proceeding is likely to assist the court in determining patent validity or
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`eliminate the need to try infringement issues." Evolutionary Intelligence, LLC v. Millennial
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`Media, Inc., No. 5:13-CV-4206, 2014 WL 2738501, at *2 (N.D. Cal. June 11, 2014); see also
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`3rd Eye Surveillance, LLC v. Stealth Monitoring, Inc., No. 6:1 4-CV- 162, 2015 WL 179000, at
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`*1 (E.D. Tex. Jan. 14, 2015).
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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 a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay
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`will likely result in simplif'ing the case before the court." NFC Techs. LLC v. HTC Am., Inc.,
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`No. 2:13-CV-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015). "Essentially,
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`courts determine whether the benefits of a stay outweigh the inherent costs based on these
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`factors." EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-CV-81, 2006 WL 2501494, at *1 (E.D.
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`Tex. July 14, 2006).
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`1. Relevant Facts
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`Analysis
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`There can be no dispute that both parties have already expended considerable time and
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`resources into the claim construction process. In fact, the Court has already conducted a
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`Markman hearing, which was held on April 26, 2019. At the end of this hearing, the Court
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`informed the Parties of how it was construing the disputed claim terms.
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`Furthermore, the Court finds that Dish could have filed its IPR Petitions more quickly.
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`Instead, Dish elected to file their Petitions long after suit was filed and even waited until after the
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`Markman hearing. The Court does not intend to critique Dish's decisionDish was free to
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`choose when to file for the IPRs. However, having waited this long to file is a factor that the
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`Court will consider.
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`Moreover, the Court finds that the Parties should have been on notice that the Court
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`anticipated that discovery would commence very quickly after the completion of the Markman
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`hearing, which is made evident from the Court's form scheduling order with respect to patent
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`cases. Finally, the Court has set this case for jury trial on July 20, 2020. It is unlikely that,
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`assuming institution, the PTAB's final written decisions in Dish's IPRs will be due, without any
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`extension, any earlier than one year after the Institution Decision, which is November 15, 2020.
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`2. Undue Prejudice
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`Dish argues that MCM will not suffer undue prejudice from a stay; however, the Court
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`disagrees for the following reasons. As a patent holder, MCM has "an interest in the timely
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`enforcement of its patent right." MiMedx Group, Inc. v. Tissue Transplant Tech. Ltd., 2015 WL
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`11573771, at *2 (W.D. Tex. Jan 5, 2015) (internal citations omitted). Here, trial is set for July
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`2020; thus, a stay will prejudice MCM by depriving it of a timely jury trial in the summer of
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`2020. The Court doubts that Dish would disagree with this. While a November 15, 2019
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`institution decision deadline might mean a November 15, 2020 deadline for a final written
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`decisionassuming institution occursthere is uncertainty to this date. Although 35 U.S.C. §
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`31 6(a)(1 1) and 37 C.F.R. § 42.100 indicate that a final written decision should "normally" issue
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`no more than a year after the institution decision, they also state that the one-year period can be
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`extended up to six months for good cause. If this were to occur, then the November 15, 2020
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`deadline would be pushed to May 15, 2021, which is more than a year after the Court's predicted
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`trial date. Furthermore, this does not account for any potential Federal Circuit appeal of the final
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`written decisions, which would add even more time and therefore create an even longer delay. At
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`any rate, even under the best of scenarios, the final decision at the PTAB would come months
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`after the jury trial that is scheduled for July 2020. Accordingly, the Court concludes that this
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`factor weighs against granting a stay.
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`3. Stage of Proceedings
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`If "the court has expended significant resources, then courts have found that this factor
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`weighs against a stay." CAN VS Corp. v. US., 118 Fed. Cl. 587, 595-96 (2014) (quoting
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`Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp.2d 1028, 103 1-32 (C.D.
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`Cal. 2013) ("The Court's expenditure of resources is an important factor in evaluating the stage
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`of the proceedings.")); SenoRx, Inc. v. Hologic, Inc., No. 12-173-LPS-CJB, 2013 WL 144255, at
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`*5
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`(D. Del. Jan. 11, 2013) ("{Once] the Court and the parties have already expended
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`significant resources .
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`.
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`. the principle of maximizing the use of judicial and litigant resources is
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`best served by seeing the case through to its conclusion."). As stated earlier, the Court has
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`invested significant resources and time in construing all the contested claim tenns. On the other
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`hand, the Court acknowledges that discovery has not yet begun, and that the Parties will incur
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`great expense in the future preparing for trial. However, the Court finds particularly critical, at
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`least in this case, Dish's delay in filing for a stay after the Parties had briefed and argued claim
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`construction at the Markman hearing. As such, the Court finds that this outweighs any future
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`expense that the Parties might incur.
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`The Court also considers "whether the defendant acted with reasonable dispatch in filing
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`its petitions for inter partes review and then, after the petitions were granted, in filing its motion
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`for a stay." NEC Tech. LLC v. HTC Am., Inc., No. 2:13-CV-1058-WCB, 2015 WL 1069111, at
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`*3 (E.D. Tex. March 11, 2015). As discussed above, Dish waited until long after MCM filed suit
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`and the conclusion of the Markman hearing to file its IPR petitions. Therefore, the Court finds
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`that Dish failed to act with reasonable dispatch in filing their petitions for inter partes review and
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`their subsequent motion to stay. In short, in view of the advanced nature of the Court's
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`proceedings, including the completion of the Markman hearing, the rendering of claim
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`constructions by the Court, and the fact that a jury trial has been set for July 2020, the Court
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`finds that this factor weighs against granting a stay
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`4. Simplification of Issues
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`"[T]he most important factor bearing on whether to grant a stay in this case is the
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`prospect that the inter partes review proceeding will result in simplification of issues before the
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`Court." NEC Tech., 2015 WL 1069111 at *4 The Court finds that this factor strongly favors
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`denying a stay. At the time this Motion was filed, the IPR Petition had not been instituted or
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`denied by the PTAB; therefore, any simplification of the issues at trial after a PTAB decision
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`will likely be minimal. Moreover, Dish admits that since there is no guarantee that the PTAB
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`will grant institution, then there is no guarantee that granting a stay will simplify any issues in
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`this litigation. Thus, were the PTAB to ultimately deny institution, then the trial in this case
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`would be needlessly delayed. Admittedly, if the PTAB does grant institution, then there is the
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`possibility that some claims might be invalidated. As a result, Dish can argue nothing more than
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`that there is a potential simplification of issues that favors granting a stay.
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`Additionally, the Court finds that even if institution is granted, Dish's IPRs would not
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`simplify the issues in this case. The Court has already resolved the meaning of the claim terms as
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`a matter of law. However, in its IPR Petitions, Dish includes the claim constructions that they
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`proffered prior to the Court's Markman hearing instead of the Court's final constructions. Def.'s
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`Mot. Ex. A at 7-13; Id. Ex. B at 8-18. For example, in the IPR Petitions, Dish construes the
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`"selectively transmit" limitation of the asserted claims as "transmitting all content requests to
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`take place within the service provider network in response to the controller instructions' decision
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`to transmit the content requests." Id. Ex. A at 13. The Court, however, construed the "selectively
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`transmit" limitation differently than what Dish submitted in its IPR Petitions. This is also further
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`support for a determination that a grant of a stay at this point would result in unfair prejudice (see
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`factor one discussed in Part 2 of this Order). Accordingly, the Court finds that this factor strongly
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`weighs against granting a stay.
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`Conclusion
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`After considering the relevant factors and for the reasons stated above, the Court finds
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`that Defendant Dish Network L.L.C.'s Opposed Motion to Stay Pending Inter Partes Review of
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`U.S. Patent Nos. 8,799,468 and 9,465,925 should be and hereby is DENIED.
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`SIGNED this 30th day of May 2019.
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`UNITED STATES DISTRICT
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