Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 1 of 10 PageID #: 4005
`
`IN THE UNITED STATES DISTRICT COURT
` FOR THE EASTERN DISTRICT OF TEXAS
` MARSHALL DIVISION
`
`Case No. 2:19-cv-00025-JRG
`
`Hon. Rodney R. Gilstrap
`
`JURY TRIAL DEMANDED
`
`))))))))))))
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`MOTION TO STAY PROCEEDINGS
`
`Defendant Apple Inc. (“Apple”) respectfully moves this Court to stay all proceedings
`
`pending the United States Court of Appeals for the Federal Circuit’s resolution of Apple’s petition
`
`for writ of mandamus. In its petition, Apple asks the Federal Circuit to vacate this Court’s orders
`
`denying Apple’s motions to stay and transfer, and to remand with instructions to stay the
`
`proceedings pending final judgment in the Broadcom and Qualcomm cases or alternatively to
`
`transfer this case to the Central District of California for coordination with those suits. On January
`
`9, 2020, the Federal Circuit entered an expedited order directing Plaintiff, Rembrandt Wireless
`
`Technologies, LP (“Rembrandt”), to respond to Apple’s petition no later than January 16, 2020,
`
`and further ordered that Apple file any reply within three days thereafter.
`
`Apple respectfully submits that a stay pending resolution of Apple’s petition is warranted
`
`to prevent prejudice to Apple and to conserve the parties’ and the Court’s resources. Currently,
`
`expert disclosures are due on January 27, 2020 (also the date for close of fact discovery), rebuttal
`
`expert disclosures on February 17, 2020, expert discovery is due to close on March 2, 2020 (also
`
`the deadline for filing dispositive motions), and pretrial disclosures are due March 23, 2020.
`
`1
`
`Roku Exhibit 1032
`Roku, Inc. v. Canon Kabushiki Kaisha
`Page 00001
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 2 of 10 PageID #: 4006
`
`Multiple depositions are scheduled for this month. A stay would simplify the issues by giving the
`
`parties and the Court clarity, before exchanging expert materials, deposing experts, and briefing
`
`dispositive motions, as to which, if any, claims will go forward in this Court, and which will be
`
`stayed or transferred.
`
`I.
`
`
`
`BACKGROUND
`
`On May 22, 2019, Apple filed its Motion to Transfer Venue (“Motion to Transfer”) (Dkt.
`
`No. 030). The Motion to Transfer requested that the Court, pursuant to 28 U.S.C. § 1404(a),
`
`transfer the lawsuit to the Central District of California. The parties completed their briefing on
`
`the Motion to Transfer on August 19, 2019. (See Dkt. No. 064.)
`
`
`
`On November 1, 2019, Apple filed its Motion to Stay Pursuant to the Customer-Suit
`
`Exception (“Motion to Stay”).
`
`
`
`On November 27, 2019, the Court issued separate opinions denying the Motion to Transfer
`
`and the Motion to Stay.
`
`
`
`On January 7, 2020, Apple filed its petition for writ of mandamus with the Federal Circuit.
`
`As noted above, the Federal Circuit ordered expedited briefing, with Rembrandt to respond to the
`
`mandamus petition by January 16, 2020, and Apple to reply within three days thereafter.
`
`II.
`
`
`
`LEGAL STANDARD
`
`This Court may stay trial proceedings pending resolution of a petition for writ of mandamus
`
`to the Court of Appeals. See Genentech, Inc. v. Sanofi-Aventis Deutschland GMBH, No. C 08-
`
`4909, 2009 WL 1313193, at *2 (N.D. Cal. May 12, 2009) (staying all proceedings pending
`
`resolution of mandamus petition in related case); Ruppert v. Principal Life Ins. Co., No. 06-cv-
`
`903, 2007 WL 2025233, at *8 (S.D. Ill. July 9, 2007) (staying order of transfer pending resolution
`
`of petition for writ of mandamus); see also In re U.S. Dep’t of Homeland Security, 459 F.3d 565,
`
`
`
`2
`
`Roku Exhibit 1032
`Page 00002
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 3 of 10 PageID #: 4007
`
`568 (5th Cir. 2006) (granting emergency motion to stay pending disposition of petition for writ of
`
`mandamus).
`
`
`
`In evaluating a motion to stay pending disposition of a writ of mandamus, courts apply the
`
`same four-factor balancing test that governs stays pending direct appeal: (1) the likelihood that the
`
`party seeking the stay will prevail on the merits of the petition; (2) the likelihood that the moving
`
`party will be irreparably harmed absent a stay; (3) the prospect that others will be harmed by a
`
`stay; and (4) the public interest in granting the stay. See In re First South Sav. Ass’n, 820 F.2d
`
`700, 709 (5th Cir. 1987); see also Cuomo v. U.S. Nuclear Regulatory Comm’n, 772 F.2d 972, 974
`
`(D.C. Cir. 1985). Importantly, each of these factors need not be given equal weight. Standard
`
`Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 513 (Fed. Cir. 1990). Rather, “the four
`
`stay factors can effectively merge,” in that the court “assesses movant’s chances for success on
`
`appeal and weighs the equities as they affect the parties and the public.” Id.
`
`III. ARGUMENT
`
`
`
`Apple respectfully submits that a stay of proceedings pending the Federal Circuit’s
`
`decision on Apple’s writ petition is necessary and appropriate. The likely simplification of the
`
`issues in this case, and the conservation of party and judicial resources across multiple districts,
`
`makes this the optimal approach.
`
`A.
`
`Apple Likely Will Prevail on the Merits of Its Writ Petition
`
`
`
`Apple likely will succeed on the merits of its writ petition. Well-established precedent
`
`holds that the customer-suit exception may be applied to avoid the prospect of multiple district
`
`courts resolving substantially similar claims and issues. Here, the Court declined to stay the case
`
`based on the possibility that the California cases would not totally resolve the litigation, and also
`
`declined to transfer to allow full resolution of this case with the California cases. The Federal
`
`
`
`3
`
`Roku Exhibit 1032
`Page 00003
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 4 of 10 PageID #: 4008
`
`Circuit is likely to intervene to prevent the resultant unnecessary expenditure of judicial and party
`
`resources.
`
`Broadcom and Qualcomm are the “true defendants” with respect to the core issues of
`
`infringement and validity as to 95% of the products at issue in this case. Additionally, Apple has
`
`agreed to be bound by the outcomes of the California cases as to the remaining 5% of the accused
`
`products—products against which Rembrandt has lodged nearly identical allegations as the other
`
`95% based on the exact same section of the Bluetooth standard. In analogous situations, the
`
`Federal Circuit has granted petitions for writs of mandamus. See In re Nintendo of Am., Inc., 756
`
`F.3d 1363 (Fed. Cir. 2014) (granting petition for writ of mandamus of a denial of a motion to sever
`
`and transfer where Nintendo was the “true defendant” for purposes of infringement liability); In
`
`re Google Inc., 588 F. App’x 988 (Fed. Cir. 2014) (granting petition for writ of mandamus of a
`
`denial to stay due to potentially different implementations of the Android platform in customer
`
`phones).
`
`Much like in Google, the possibility that there may be as-yet-unalleged differences in the
`
`minority Apple products is too speculative to justify denial of the relief sought in Apple’s motions.
`
`At a minimum, transfer or stay eliminates the risk of inconsistent infringement outcomes as to the
`
`same products utilizing the Broadcom and Qualcomm chips. And even if the Court eventually has
`
`to make liability determinations as to the 5% of the products using Apple chips, the scope of issues
`
`will be narrow in comparison to, and independent from, the overwhelming majority of
`
`infringement and validity determinations.
`
`
`
`Because the Federal Circuit, as in Nintendo and Google, is likely to recognize the
`
`tremendous efficiency gains of stay or transfer, Apple is likely to prevail on the merits of its writ
`
`petition.
`
`
`
`4
`
`Roku Exhibit 1032
`Page 00004
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 5 of 10 PageID #: 4009
`
`B.
`
`A Stay Is Warranted To Prevent Harm to Apple and To Conserve Party and
`Judicial Resources
`
`As detailed in both the Motion to Transfer and the Motion to Stay, Apple has and continues
`
`to suffer prejudice by having to litigate a largely duplicative case, as well by having to litigate in
`
`an inconvenient forum. See In re EMC Corp., 501 F. App’x 973, 975-76 (Fed. Cir. 2013)
`
`(“Congress’ intent ‘to prevent the waste of time, energy and money and to protect litigants,
`
`witnesses and the public against unnecessary inconvenience and expense’ may be thwarted where
`
`defendant is subject to extended litigation prior to resolution of its transfer motion.”) (quoting Van
`
`Dusen v. Barrack, 376 U.S. 612, 616 (1964)); In re Nintendo, Misc. No. 151, 544 F. App’x 934,
`
`941 (Fed. Cir. Sept. 25, 2013) (“[T]his Court has specifically recognized the importance of
`
`addressing motions to transfer at the outset of litigation.”) (internal quotation marks omitted);
`
`DietGoal Innovations LLC v. El Pollo Loco Inc., No. 12-cv-568, 2013 WL 3760125, *1 (E.D. Tex.
`
`July 16, 2013) (“Timely motions to transfer venue ‘should [be given] a top priority in the handling
`
`of [a case]….’”) (quoting In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003)).
`
`Given the case schedule, Apple cannot realistically expect a decision from the Federal
`
`Circuit before the close of discovery and cannot even be sure a decision will issue before the
`
`dispositive motion deadline on March 2, 2020. A stay serves all parties and the Court by
`
`conserving resources during the short period during which the Federal Circuit is likely to decide
`
`Apple’s petition. Otherwise, the parties and the Court risk wasting considerable time and resources
`
`should the Federal Circuit grant the writ. As such, the prudent course is to enter a stay pending
`
`final resolution of the writ petition. See ACF Indus., Inc. v. Guinn, 384 F.2d 15, 19 (5th Cir. 1967)
`
`(explaining that a stay provides an important “means of avoiding unnecessary duplication of
`
`judicial machinery.”)
`
`
`
`5
`
`Roku Exhibit 1032
`Page 00005
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 6 of 10 PageID #: 4010
`
`C.
`
`No Party Will Suffer Substantial Harm From a Stay
`
`Issuance of the requested stay will not harm any party. Rembrandt does not compete with
`
`Apple in the marketplace. Rembrandt is a non-practicing entity that seeks only damages, not
`
`injunctive relief. See Dkt. No. 1 at 19-20. Further, the patents have expired, as Rembrandt waited
`
`years after its acquisition of those patents to sue Apple. Thus, in this particular circumstance,
`
`Rembrandt’s right to timely enforcement of its patent rights is far outweighed by the risk of
`
`inconsistent verdicts and wasted resources arising from the current case schedule and posture.
`
`D. The Public Interest Favors a Stay
`
`Finally, the public interest favors a stay. While Apple acknowledges the public interest in
`
`speedy resolution of disputes, the expired status of the patents in this case and Rembrandt’s non-
`
`participation in this market substantially diminish that interest here. In contrast, a modest stay
`
`pending resolution of Apple’s writ satisfies both the public’s interest in the efficient use of judicial
`
`resources and the Federal Circuit’s “strong preference to avoid duplicative litigation.” Google,
`
`supra at 990.
`
`V. CONCLUSION
`
`
`
`For the foregoing reasons, Apple respectfully requests that the Court stay all proceedings
`
`in this Court pending the Federal Circuit’s decision on the petition for writ of mandamus, and grant
`
`Apple such other and further relief as the Court may deem appropriate.
`
`Dated: January 13, 2020
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ David E. Sipiora
`David E. Sipiora
`(CO Bar No. 29759)
`(Eastern District of Texas Member)
`Edward J. Mayle
`(CO Bar No. 50920)
`(pro hac vice)
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`6
`
`Roku Exhibit 1032
`Page 00006
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 7 of 10 PageID #: 4011
`
`1400 Wewatta Street Suite 600
`Denver, CO 80202
`Telephone: (303) 571-4000
`Facsimile: (303) 571-4321
`tmayle@kilpaticktownsend.com
`dsipiora@kilpatricktownsend.com
`
`Russell A. Korn
`(GA Bar No. 428492)
`(Eastern District of Texas Member)
`Andrew N. Saul
`(GA Bar No. 627607)
`(Eastern District of Texas Member)
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street NE Suite 2800
`Atlanta, GA 30309
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
`rkorn@kilpaticktownsend.com
`asaul@kilpatricktownsend.com
`
`Melissa R. Smith
`melissa@gillamsmithlaw.com
`GILLAM & SMITH LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`James R. Batchelder
`(CA Bar No. 136347)
`(Eastern District of Texas Member)
`Mark D. Rowland
`(CA Bar No. 157862)
`(Eastern District of Texas Member)
`Gabrielle E. Higgins
`(CA Bar No. 163179)
`(Eastern District of Texas Member)
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Telephone: (650) 617-4000
`Facsimile: (650) 617-4090
`James.Batchelder@ropesgray.com
`Mark.Rowland@ropesgray.com
`Gabrielle.Higgins@ropesgray.com
`
`Josef B. Schenker
`
`
`
`7
`
`Roku Exhibit 1032
`Page 00007
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 8 of 10 PageID #: 4012
`
`(NY Bar No. 4935185)
`(Eastern District of Texas Member)
`Jolene L. Wang
`(NY Bar No. 5462619)
`(Eastern District of Texas Member)
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`Telephone: (212) 596-9000
`Facsimile: (212) 596-9090
`Josef.Schenker@ropesgray.com
`Jolene.Wang@ropesgray.com
`
`Counsel for Defendant Apple. Inc.
`
`
`
`8
`
`
`
`
`
`Roku Exhibit 1032
`Page 00008
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 9 of 10 PageID #: 4013
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above and foregoing
`
`document has been served on January 13, 2020, to all counsel of record who are deemed to have
`
`consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`
`
`
`9
`
`Roku Exhibit 1032
`Page 00009
`
`

`

`Case 2:19-cv-00025-JRG Document 109 Filed 01/13/20 Page 10 of 10 PageID #: 4014
`
`CERTIFICATE OF CONFERENCE
`
`The undersigned hereby certifies that counsel for Apple has complied with the meet and
`
`confer requirement in Local Rule CV-7(h). This motion is opposed. The personal conference
`
`required by Local Rule CV-7(h) was conducted on January 13, 2020. No agreement could be
`
`reached because the parties disagreed on the merits. Discussions have conclusively ended in an
`
`impasse, leaving an open issue for the court to resolve.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`
`
`
`
`
`
`72892247V.1
`
`
`
`10
`
`Roku Exhibit 1032
`Page 00010
`
`

`

`Case 2:19-cv-00025-JRG Document 109-1 Filed 01/13/20 Page 1 of 1 PageID #: 4015
`
`IN THE UNITED STATES DISTRICT COURT
` FOR THE EASTERN DISTRICT OF TEXAS
` MARSHALL DIVISION
`
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`
`Case No. 2:19-cv-00025-JRG
`
`Hon. Rodney R. Gilstrap
`
`JURY TRIAL DEMANDED
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`
`
`
`
`ORDER GRANTING MOTION TO STAY PROCEEDINGS
`
`
`Before the Court is Defendant Apple Inc.’s Motion to Stay Proceedings. The Court, having
`
`considered same, is of the opinion the motion should be GRANTED.
`
`
`
`1
`
`Roku Exhibit 1032
`Page 00011
`
`