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