Case 1:19-cv-02090-NIQA-LAS Document 60 Filed 02/12/21 Page 1 of 21 PageID #: 950
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`MONTEREY RESEARCH, LLC
`
`Plaintiff,
`
`v.
`
`C.A. No. 19-2090-NIQA-LAS
`
`NANYA TECHNOLOGY CORPORATION,
`NANYA TECHNOLOGY CORPORATION,
`U.S.A., and NANYA TECHNOLOGY
`CORPORATION DELAWARE,
`
`Defendants.
`
`OPENING BRIEF IN SUPPORT OF
`NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION,
`U.S.A., AND NANYA TECHNOLOGY CORPORATION DELAWARE’S
`MOTION FOR STAY PENDING INTER PARTES REVIEW
`
`Karen L. Pascale (#2903) [kpascale@ycst.com]
`Robert M. Vrana (#5666) [rvrana@ycst.com]
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`Telephone: (302) 571-6600
`
`Attorneys for Defendants
`Nanya Technology Corporation, Nanya
`Technology Corporation, U.S.A., and Nanya
`Technology Corporation Delaware
`
`OF COUNSEL:
`
`Peter J. Wied
`Vincent K. Yip
`Ryan C. C. Duckett
`NIXON PEABODY LLP
`300 S. Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`Telephone: (213) 629-6000
`pwied@nixonpeabody.com
`vyip@nixonpeabody.com
`rduckett@nixonpeabody.com
`
`Ariel H. Roth
`NIXON PEABODY LLP
`70 West Madison St.
`Suite 3500
`Chicago, IL 60602
`Telephone: (312) 977-4400
`aroth@nixonpeabody.com
`
`Dated: February 12, 2021
`
`IPR2021-00167
`Nanya Technology Corp. v. Monterey Research, LLC
`Monterey Research LLC Exhibit 2010
`Ex. 2010, Page 1
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`

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`Case 1:19-cv-02090-NIQA-LAS Document 60 Filed 02/12/21 Page 2 of 21 PageID #: 951
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`
`
`
`I.
`
`TABLE OF CONTENTS
`
`NATURE AND STAGE OF THE PROCEEDINGS ........................................................... 2
`
`II.
`
`SUMMARY OF ARGUMENTS ......................................................................................... 2
`
`III. BACKGROUND .................................................................................................................. 4
`
`A. This Litigation ............................................................................................................. 4
`
`B. The IPR Process .......................................................................................................... 5
`
`IV. LEGAL STANDARDS ........................................................................................................ 6
`
`V. ARGUMENT ....................................................................................................................... 7
`
`A. A Stay Will Resolve the Case or Simplify the Issues for Trial ................................... 7
`
`B. The Early Stage of This Case Strongly Favors a Stay .............................................. 11
`
`C. A Stay Will Not Unduly Prejudice or Tactically Disadvantage Monterey ............... 12
`
`VI. CONCLUSION .................................................................................................................. 16
`
`
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`AIP Acquisition LLC v. Level 4 Commc’ns, LLC,
`No. 12-617-GMS, 2014 WL 12642000 (D. Del. Jan. 9, 2014) ...............................................13
`
`Arch Chems., Inc. v. Sherwin-Williams Co.,
`No. 18-2037-LPS, D.I. 48 (D. Del. Nov. 5, 2019) .....................................................................6
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)..................................................................................................9
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-1107-GMS, 2014 WL 1369721 (D. Del. Apr. 7, 2014) ..............................................14
`
`British Telecomms. PLC v. IAC/InterActiveCorp,
`No. 18-366-WCB, 2020 WL 5517283 (D. Del. Sept. 11, 2020) .........................................5, 12
`
`Canatelo LLC v. Axis Commc’ns AB,
`No. 13-1227-GMS, 2014 WL 12774920 (D. Del. May 14, 2014) ............................................9
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`No. 17-871-LPS, 2019 WL 1276029 (D. Del. Mar. 20, 2019) ......................................7, 11, 12
`
`Ever Win Int’l Corp. v. Radioshack Corp.,
`902 F. Supp. 2d 503 (D. Del. 2012) ...........................................................................................9
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)..................................................................................................8
`
`Huvepharma Eood v. Associated British Foods, PLC,
`No. 18-129-RGA, 2019 WL 3802472 (D. Del. Aug. 13, 2019) ..............................................14
`
`Infinity Comput. Prods., Inc. v. Toshiba Am. Bus. Sols., Inc.,
`No. 12-6796-NIQA, D.I. 181 (E.D. Pa. July 10, 2019) .............................................................9
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`No. 18-452-WCB, 2019 WL 3943058 (D. Del. Aug. 21, 2019) ..................................... passim
`
`Irwin Industrial Tool Co. v. Milwaukee Electric Tool Corp.,
`2016 WL 1735330 (D. Mass. April 28, 2016) .........................................................................15
`
`Neste Oil OYJ v. Dynamic Fuels, LLC,
`No. 12-1744-GMS, 2013 WL 3353984 (D. Del. July 2, 2013) ...............................................12
`
`Princeton Digital Image Corp.,
`No. 12-1461-LPS, 2014 WL 3819458 (D. Del. Jan. 15, 2014) ...............................................14
`
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`
`
`RetailMeNot, Inc. v. Honey Sci. LLC,
`No. 18-937-CFC, 2020 WL 373341 (D. Del. Jan. 23, 2020).................................6, 7, 9, 11, 12
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...............................................................................................................6
`
`Smartflash LLC v. Apple Inc.,
`621 Fed. App’x 995 (Fed. Cir. 2015).......................................................................................11
`
`Uniloc 2017 LLC v. Vudu, Inc.
`No. 19-183-CFC, D.I. 72 (D. Del. Mar. 26, 2020) ..................................................................13
`
`Statutes
`
`35 U.S.C. §§ 6, 311 ..........................................................................................................................5
`
`35 U.S.C. §§ 311–319 ......................................................................................................................5
`
`35 U.S.C. §§ 311(b), 316(a) .............................................................................................................5
`
`35 U.S.C. § 314 ................................................................................................................................4
`
`35 U.S.C. § 314(a) ...........................................................................................................................6
`
`35 U.S.C. § 315(e) ...........................................................................................................................6
`
`35 U.S.C. § 315(e)(2) .....................................................................................................................10
`
`35 U.S.C. § 316(a)(11) .....................................................................................................................4
`
`35 U.S.C. § 316(d) ...........................................................................................................................6
`
`America Invents Act ........................................................................................................................5
`
`Regulations
`
`37 C.F.R. §§ 42.51, 42.53 ................................................................................................................5
`
`37 C.F.R. § 42.100(b) ......................................................................................................................6
`
`37 C.F.R. § 42.100(c).......................................................................................................................6
`
`37 C.F.R. § 42.107 ...........................................................................................................................5
`
`Other Authorities
`
`157 Cong. Rec. S952 (daily ed. Feb. 28, 2011) ...............................................................................5
`
`H. Rep. No. 112-98, Part I (2011)....................................................................................................5
`
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`
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`Defendants Nanya Technology Corporation, Nanya Technology Corporation, U.S.A., and
`
`Nanya Technology Corporation Delaware (collectively “Nanya”) request a stay of this case until
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`the Patent Trial and Appeal Board (“PTAB”) at the U.S. Patent and Trademark Office concludes
`
`inter partes review (“IPR”) proceedings for the patents asserted in this litigation by Plaintiff
`
`Monterey Research, LLC (“Monterey”). Non-practicing entity Monterey asserts that Nanya
`
`infringes six patents. Four of the six patents, however, are subject to IPR challenges to their validity
`
`at the PTAB. The PTAB has already decided to complete an in-depth review of one of the patents,
`
`finding there is a “reasonable likelihood” that at least one challenged claim of the patent will be
`
`cancelled. IPR petitions relating to three other asserted patents are also on file at the PTAB and
`
`awaiting its decisions on whether to institute a full review.
`
`This Court recently granted a stay in related litigation by Monterey against AMD.1 In that
`
`case, the Court concluded that the IPR challenges would simplify the case, preserve judicial
`
`resources, and promote the efficient resolution of the dispute. The circumstances here are similar,
`
`and the same reasoning applies. A stay would pave the way for substantial simplification of this
`
`case based on the IPR challenges to four of the six asserted patents. A stay would also prevent this
`
`Court from duplicating the PTAB’s efforts and delay burdensome tasks for the Court and the
`
`parties—tasks that may become unnecessary. As in the AMD case, Monterey does not compete
`
`with Nanya, and a stay will not prejudice Monterey’s ability to assert its remaining claims after
`
`the IPR decisions. Accordingly, Nanya requests an immediate stay of this case pending completion
`
`of the IPR proceedings relating to the asserted patents.
`
`
`1 Order Granting AMD’s Motion to Stay Pending Inter Partes Review, Monterey Research LLC,
`v. Advanced Micro Devices, Inc., No. 19-2149-NIQA, D.I. 96 (Jan. 5, 2021) (“Order Granting
`AMD’s Motion to Stay”).
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`
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`I.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`On November 11, 2019, Monterey filed a Complaint alleging that Nanya infringes U.S.
`
`Patent Nos. 6,363,031 (“the ’031 patent”); 6,651,134 (“the ’134 patent”); 6,680,516 (“the ’516
`
`patent”); 6,825,526 (“the ’526 patent”); 6,902,993 (“the ’993 patent”); and 7,158,429 (“the ’429
`
`patent”) (collectively, “the Asserted Patents”). Id.
`
`Monterey asserts two of the six Asserted Patents against other defendants in four co-
`
`pending actions before this Court.2 The five cases are coordinated for discovery and pre-trial
`
`purposes. The Court issued a Scheduling Order for all cases on October 1, 2020. D.I. 38. Briefing
`
`on claim construction issues is scheduled to begin in May 2021, and the claim construction hearing
`
`is scheduled for mid-July 2021. Id., Ex. A. Fact discovery closes on November 20, 2021, and
`
`expert discovery closes on April 7, 2022. Id. The final pretrial conference is scheduled for October
`
`11, 2022, but there is no date set for trial. Id. ¶ 23.
`
`The Court issued a Protective Order for all cases on November 23, 2020. D.I. 52. Monterey
`
`filed a Motion to Compel Defendants to Produce Source Code and to Enter a Supplemental
`
`Protective Order on Source Code against Nanya, STMicroelectronics, and Qualcomm on January
`
`29, 2021. Nanya filed its Opposition on February 11, 2021. The motion is expected to be fully
`
`briefed by February 18, 2021.
`
`II.
`
`SUMMARY OF ARGUMENT
`
`The facts here weigh strongly in favor of an immediate stay of the entire case. All relevant
`
`factors favor a stay: (1) A stay until completion of the IPR proceedings will simplify—if not wholly
`
`
`2 Monterey Research, LLC v. Qualcomm Incorporated, No. 19-2083-NIQA; Monterey Research,
`LLC v. STMicroelectronics N.V., et al., No. 20-0089-NIQA; Monterey Research, LLC v.
`Advanced Micro Devices, Inc., No. 19-2149-NIQA; and Monterey Research, LLC v. Marvell
`Technology Group, Ltd., et al., No. 20-0158-NIQA.
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`eliminate—issues for trial and therefore promote judicial economy; (2) the case is still in its early
`
`stages; and (3) Monterey will not be unduly prejudiced or tactically disadvantaged by any delay.
`
`1.
`
`A stay will resolve or simplify the issues in this litigation. If the PTAB invalidates
`
`the asserted claims of an Asserted Patent as part of the IPRs, that patent becomes moot. Even if
`
`some asserted claims were to survive review, a stay will simplify the case because the PTAB’s
`
`findings will inform claim construction and other substantive issues, and estoppel would limit the
`
`prior art that Nanya can use in any subsequent district court litigation.
`
`2.
`
`It is early in the case, and the most burdensome stages lie ahead. Claim construction
`
`briefing will not even begin for several months, and the related hearing will occur months after
`
`that. The parties have taken no depositions. Expert disclosures are almost a year away. Dispositive
`
`motions are not due until May 2022. And the Court has yet to set a trial date, which at the earliest
`
`would be 20 months away, assuming no delays in the current scheduling order. Staying the case
`
`now will avoid needless discovery, obviate substantial briefing, and conserve judicial and party
`
`resources.
`
`3.
`
`Monterey will not suffer undue prejudice or disadvantage because of a stay.
`
`Monterey is a non-practicing entity: its business is based on acquiring and licensing patent rights
`
`and suing companies that allegedly infringe those rights for royalty payments. Monterey does not
`
`compete with Nanya and has not sought a preliminary injunction. There is no potential for
`
`irreparable harm from a stay. To the extent any asserted claims of the Asserted Patents survive the
`
`IPRs, and for the remaining two patents, Monterey can seek monetary damages from Nanya after
`
`the IPRs to the same extent it can now. Moreover, Monterey, along with its predecessors-in-
`
`interest, waited years before asserting the Asserted Patents against Nanya. By contrast, Nanya
`
`moved for a stay soon after IPR challenges had been filed for four of the six Asserted Patents.
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`Because all relevant factors favor a stay, the Court should immediately stay this case
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`pending resolution of the IPR proceedings on the Asserted Patents.
`
`III. BACKGROUND
`
`A.
`
`This Litigation
`
`This case is part of a litigation campaign that Monterey, a non-practicing entity focused on
`
`monetizing patents it obtained from other companies, brought against five different defendants.
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`Two of those actions have now been stayed: On January 5, 2021, the Court stayed Monterey’s case
`
`against AMD pending the resolution of IPR proceedings, and on January 11, 2021, the Court stayed
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`Monterey’s case against Marvell in view of settlement.3
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`Monterey asserts six patents against a range of products sold by Nanya. D.I. 1, ¶¶ 41, 56,
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`71, 88, 104 and 120. Two of the Asserted Patents (the ’031 and ’134 Patents) are already expired.
`
`Id., Exs. A–F.
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`One of the six Asserted Patents is already under review in instituted IPR proceedings before
`
`the PTAB; three others are subject to pending IPR petitions. The PTAB has instituted review of
`
`all claims of the’134 Patent challenged in petitions filed by AMD. Wied Decl., Ex. 1. The PTAB
`
`is required by statute, 35 U.S.C. § 316(a)(11), to issue its final decisions regarding the patentability
`
`of the challenged claims in that IPR by December 2, 2021, absent good cause for an extension.
`
`Nanya filed petitions for IPR of the ‘516, ‘993, and ‘429 Patents, in addition to a petition for IPR
`
`of the ‘134 Patent on separate grounds from the AMD petition. Wied Decl., Exs. 2–5. In the next
`
`few months, the PTAB will decide whether to institute those IPRs, as well as Qualcomm’s separate
`
`challenge to the ’516 Patent. Wied Decl., Ex. 6. See 35 U.S.C. § 314 (setting timing of institution
`
`
`3 Order Granting AMD’s Motion to Stay; Order to Stay Case in View of Settlement, Monterey
`Research, LLC v. Marvell Technology Group, Ltd., et al., No. 19-0158-NIQA, D.I. 59 (Jan. 11,
`2021).
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`decision); 37 C.F.R. § 42.107 (setting timing of preliminary response). The petition for the
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`instituted IPR and the pending IPR petitions all request cancellation of the claims Monterey has
`
`asserted against Nanya. If, as anticipated, the PTAB institutes IPRs based on the pending Nanya
`
`petitions, it will issue final decisions in those IPR proceedings no later than June 2022 (absent
`
`good cause for an extension).
`
`B.
`
`The IPR Process
`
`The IPR process was created by the America Invents Act (“AIA”) to allow the PTAB to
`
`review the patentability of one or more claims of an issued patent. See generally, 35 U.S.C.
`
`§§ 311–319. The AIA’s legislative history indicates that Congress viewed IPRs “as serving the
`
`policy of adjudicating patent validity in an efficient manner.” British Telecomms. PLC v.
`
`IAC/InterActiveCorp, No. 18-366-WCB, 2020 WL 5517283 at *2 (D. Del. Sept. 11, 2020)
`
`(Bryson, J., sitting by designation); see also H. Rep. No. 112-98, Part I, at 48 (2011) (statutory
`
`post-grant proceedings, including IPRs, were designed to be “quick and cost effective alternatives
`
`to litigation”); 157 Cong. Rec. S952 (daily ed. Feb. 28, 2011) (IPRs were intended to provide a
`
`“faster, less costly alternative[ ] to civil litigation to challenge patents”) (statement of Sen. Chuck
`
`Grassley); id. at S5319 (daily ed. Sept. 6, 2011) (post-grant proceedings were meant to be “an
`
`inexpensive substitute for district court litigation” that “allows key issues to be addressed by
`
`experts in the field”) (statement of Sen. Jon Kyl).
`
`IPRs provide for a full adversarial proceeding on patent validity based on prior art patents
`
`and printed publications. See 35 U.S.C. §§ 311(b), 316(a); 37 C.F.R. §§ 42.51, 42.53. Each IPR is
`
`conducted before a panel of three technically-trained Administrative Patent Judges from the
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`PTAB. See 35 U.S.C. §§ 6, 311. The entire IPR process for an instituted petition is completed
`
`within 12 months of institution and concludes with a final written decision by the panel of PTAB
`
`judges. After a petition is filed, the PTAB panel determines if the petitioner has shown “a
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`reasonable likelihood that [it] would prevail with respect to at least 1 of the claims challenged in
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`the petition.” See 35 U.S.C. § 314(a). If instituted, the patent owner can narrow the claims by
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`amendment. See 35 U.S.C. § 316(d). Once the PTAB institutes an IPR, it generally issues its final
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`written decision on the patentability of the challenged claims within a year of institution. See 37
`
`C.F.R. § 42.100(c). Petitioners are estopped from arguing any invalidity ground in civil actions
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`that they “raised or reasonably could have raised” for claims that “result[] in a final written decision
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`under section 318(a).” 35 U.S.C. § 315(e).
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`IV.
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`LEGAL STANDARDS
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`“Generally, a decision to stay litigation lies within the sound discretion of the Court.” Order
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`Granting AMD’s Motion to Stay at 1 n.1 (citing Cost Bros. v. Travelers Indem. Co., 760 F.2d 58,
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`60 (3d Cir. 1985); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988)). A stay
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`pending institution or completion of an IPR “is particularly justified when the outcome of a [Patent
`
`Office] proceeding is likely to assist the court in determining patent validity or eliminate the need
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`to try infringement issues.” RetailMeNot, Inc. v. Honey Sci. LLC, No. 18-937-CFC, 2020 WL
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`373341 at *3 (D. Del. Jan. 23, 2020) (quoting IOENGINE, LLC v. PayPal Holdings, Inc., No. 18-
`
`452-WCB, 2019 WL 3943058 at *2 (Bryson, J., sitting by designation) (D. Del. Aug. 21, 2019)).
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`Prior to institution, a stay is frequently justified – as courts in this District have recognized,
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`arguments for both pre- and post-institution stays have been “strengthened” by recent changes4 in
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`IPR standards. See id. (granting stay before institution of IPR proceedings); Oral Order, Arch
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`Chems., Inc. v. Sherwin-Williams Co., No. 18-2037-LPS, D.I. 48 (D. Del. Nov. 5, 2019) (same)
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`(Wied Decl. Ex. 9). “[A]fter the PTAB has instituted review proceedings, the parallel district court
`
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`4 See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354–55 (2018) (holding that IPR institution must
`be on all or none of the claims for which review is sought); 37 C.F.R. § 42.100(b) (claim
`construction undertaken by the PTAB is now conducted according to the same standard applied
`in federal courts to construe patent claims).
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`litigation ordinarily should be stayed.” IOENGINE, 2019 WL 3943058 at *4 (quoting NFC
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`Technology, LLC v. HTC America, Inc., No. 2:13-1058-WCB, 2015 WL 1069111 at *5 (E.D. Tex.
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`March 11, 2015)).
`
`In deciding whether to stay a case pending IPR proceedings, courts in this District weigh
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`three factors: “(1) whether a stay will simplify the issues for trial, (2) whether discovery is
`
`complete and a trial date has been set, and (3) whether a stay would unduly prejudice or present a
`
`clear tactical disadvantage to the non-moving party.” RetailMeNot, 2020 WL 373341 at *3
`
`(quoting Ethicon LLC v. Intuitive Surgical, Inc., No. 17-871-LPS, 2019 WL 1276029 at *1 (D.
`
`Del. Mar. 20, 2019)); see also Order Granting AMD’s Motion to Stay at 1 n.1 (quoting Cephalon,
`
`Inc. v. Impax Labs., Inc., No. 11-1152-SLR, 2012 WL 3867568 at *2 (D. Del. Sept. 6, 2012)). All
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`three factors weigh strongly in favor of an immediate stay in this case.
`
`V.
`
`ARGUMENT
`
`A.
`
`A Stay Will Resolve the Case or Simplify the Issues for Trial
`
`A stay will undoubtedly simplify the issues for trial in this case. The issues in this patent
`
`infringement case are complex, involving technologies related to semiconductor chip design,
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`computer memory interfaces, and memory structure and materials. See D.I. 1, ¶¶ 41, 56, 71, 88,
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`104 and 120. Most of the Asserted Patents, including the claims Monterey has identified as
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`allegedly infringed by Nanya, are subject to instituted IPR proceedings or pending IPR petitions.
`
`The IPR process “was designed in large measure to simplify proceedings before the courts and to
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`give the courts the benefit of the expert agency’s full and focused consideration of the effect of
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`prior art on patents being asserted in litigation.” IOENGINE, 2019 WL 3943058 at *8 (quoting
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`NFC Tech., 2015 WL 1069111 at *4). A stay of the district court proceedings pending the PTAB’s
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`decisions in the IPRs will substantially simplify the issues—whether by resolving allegations
`
`regarding a patent in its entirety, eliminating certain claims from the case, or limiting the arguments
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`that the parties may assert at trial. This “most important” of the three factors weighs strongly in
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`favor of a stay. See IOENGINE, 2019 WL 3943058 at *8.
`
`Any patent claim cancelled by the PTAB during an IPR is rendered void ab initio. See
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1346 (Fed. Cir. 2013). If all of the
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`challenged patents are invalidated, the case would go from six patents to only two patents.5 Even
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`if only some of the asserted claims are cancelled, “that finding would reduce the number of issues
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`left to be litigated,” simplifying the overall case. Order Granting AMD’s Motion to Stay at 2.
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`The available IPR statistics support that there is a very high probability that challenged
`
`claims will be cancelled by the PTAB, and the Court and the parties will not need to expend time
`
`and resources to address the cancelled claims. The PTAB has already instituted review of asserted
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`claims of the’134 Patents based on AMD’s request, determining that there is “a reasonable
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`likelihood” that AMD will “prevail in showing the unpatentability of at least one challenged
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`claim.” Wied Decl. Ex. 1 at 2. Following institution, an IPR proceeding is highly likely to result
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`in the cancellation of some or all claims. Among all final written decisions issued in completed
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`IPRs for Fiscal Year 2020, 83% resulted in the cancellation of at least some challenged claims,
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`and 62% resulted in the cancellation of all challenged claims. Wied Decl. Ex. 8 at 13 (PTAB Trial
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`Statistics (Fiscal Year 2020)). In addition, the PTAB is also likely to institute review based on one
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`or more of the pending IPR petitions relating to the Asserted Patents, given the PTAB’s overall
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`65% institution rate for petitions filed against “Electrical/Computer” patents since 2012. Wied
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`Decl. Ex. 7 at 7 (PTAB Trial Statistics (Nov. 2020)). These statistics support a “fair inference that
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`the issues in this case are apt to be simplified and streamlined to some degree as a result of the
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`5 At the time of this Court’s order, the PTAB had granted IPR of only four of the six patents
`asserted against AMD. Order Granting AMD’s Motion to Stay at 2.
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`27729169.1
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`Ex. 2010, Page 12
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`Case 1:19-cv-02090-NIQA-LAS Document 60 Filed 02/12/21 Page 13 of 21 PageID #: 962
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`
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`[IPR] proceedings.” Ever Win Int’l Corp. v. Radioshack Corp., 902 F. Supp. 2d 503, 506 (D. Del.
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`2012); see also RetailMeNot, 2020 WL 373341, at *4 (granting stay pending IPR and citing a
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`similar institution rate as evidence that the PTAB would likely institute review).
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`Even if some of the challenged asserted claims survive review, the PTAB’s decisions
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`relating to those claims will certainly provide guidance for the Court on claim scope and validity
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`issues. See, e.g., Order Granting AMD’s Motion to Stay at 2 (“Should the claims survive the IPR
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`process, this Court will benefit from the PTAB’s expertise and review.”); Canatelo LLC v. Axis
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`Commc’ns AB, No. 13-1227-GMS, 2014 WL 12774920 at *2 n.3 (D. Del. May 14, 2014) (“Should
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`the PTAB deem the patents-in-suit unpatentable or narrow their scope, the court’s resources will
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`be conserved by expending fewer resources on claim construction or avoiding the claim
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`construction process altogether.”). Any argument that Monterey makes in opposing IPR petitions
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`or in arguing asserted claims should be confirmed in instituted IPR proceedings will add to the
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`patents’ file histories, affect claim construction, and potentially limit claim scope. See, e.g., Aylus
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`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017) (“[S]tatements made by a patent
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`owner during an IPR proceeding, whether before or after an institution decision, can be considered
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`for claim construction and relied upon to support a finding of prosecution disclaimer.”). For
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`example, in Infinity Comput. Prods., Inc. v. Oki Data Am., Inc., Judge Stark found all asserted
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`claims indefinite—and therefore invalid—based on statements the patent owner made in an ex
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`parte reexamination proceeding at the Patent Office. No. 18-0463-LPS, 2019 WL 2422597 at *4–
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`6 (D. Del. June 10, 2019); see also Infinity Comput. Prods., Inc. v. Toshiba Am. Bus. Sols., Inc.,
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`No. 12-6796-NIQA, D.I. 181 (E.D. Pa. July 10, 2019) (this Court staying all related cases pending
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`appeal of Judge Stark’s indefiniteness finding) (Wied Decl. Ex. 10); Infinity Comput. Prods., No.
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`12-6796-NIQA, 2019 WL 920197 at *8-9 (E.D. Pa. Feb 22, 2019) (this Court limiting damages
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`27729169.1
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`Ex. 2010, Page 13
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`Case 1:19-cv-02090-NIQA-LAS Document 60 Filed 02/12/21 Page 14 of 21 PageID #: 963
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`based on statements and claim amendments made during Patent Office proceedings). The IPR
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`proceedings here may produce a similar record of admissions or statements by Monterey before
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`the Patent Office that will affect the scope and validity of the claims asserted in this case. Thus,
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`staying this case until completion of all IPR proceedings will provide the Court with the benefit of
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`the PTAB’s expert guidance and the complete intrinsic record of the Asserted Patents before taking
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`up claim construction or validity issues.
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`Even in the unlikely event that the PTAB were to find all asserted claims patentable, the
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`IPR proceedings would still simplify this case. If the PTAB issues a final written decision
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`confirming any asserted claim, Nanya will be estopped from arguing to this Court that claim is
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`invalid on any ground that Nanya “raised or reasonably could have raised” during the IPR
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`proceedings. See 35 U.S.C. § 315(e)(2). That statutory estoppel, combined with the PTAB’s
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`guidance on claim scope, would narrow and streamline this litigation even if all asserted claims
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`were to survive the IPR proceedings.
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`Finally, a stay of this case will also preserve the efficiencies gained by this Court’s stay of
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`related litigation against AMD. One of the patents Monterey asserts against Nanya is also asserted
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`against AMD and is subject to instituted IPR proceedings. In the absence of a stay here, claim
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`construction and validity issues relating to that patent will be adjudicated in parallel at the PTAB
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`and by this Court. That would waste the judicial resources this Court sought to preserve by granting
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`AMD’s request for a stay. On the other hand, a stay here would maintain consistency between
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`related cases and conserve the Court’s resources. Cf. Monterey Research, LLC’s Opposition to
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`AMD’s Motion to Stay Pending Inter Partes Review, Advanced Micro Devices, Inc., No. 19-
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`2149-NIQA, D.I. 56 at 15 (Sept. 16, 2020) (arguing that lack of “synchrony” among the related
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`actions would “undermine” judicial efficiency and “squander judicial resources”).
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`27729169.1
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`Ex. 2010, Page 14
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`Case 1:19-cv-02090-NIQA-LAS Document 60 Filed 02/12/21 Page 15 of 21 PageID #: 964
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`Therefore, the case-simplification factor weighs heavily in favor of a stay.
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`B.
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`The Early Stage of This Case Strongly Favors a Stay
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`Now is a perfect time to stay this case. In considering the status of the litigation, courts in
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`this District primarily consider whether discovery is complete and a trial date has been set. See,
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`e.g., Order Granting AMD’s Motion to Stay at 2; Ethicon LLC v. Intuitive Surgical, Inc., No. 17-
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`871-LPS, 2019 WL 1276029 at *1 (D. Del. Mar. 20, 2019); RetailMeNot, Inc., 2020 WL 373341
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`at *6; IOENGINE, 2019 WL 3943058 at *5. As this Court has observed, stays are particularly
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`appropriate where, as here, the “most burdensome” phases of the case all lie ahead. Order Granting
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`AMD’s Motion to Stay at 2 (“[S]tays are favored when the most burdensome stages of the case—
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`completing discovery, preparing expert reports, filing and responding to pretrial motions,
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`preparing for trial, going through the trial process, and engaging in post-trial motions practice—
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`all lie in the future.”) (quoting Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 18-01679,
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`D.I. 128 at *2 (D. Del. Jun. 2, 2020) (Wied Decl. Ex. 11)); cf. Smartflash LLC v. Apple Inc., 621
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`Fed. App’x 995, 1005 (Fed. Cir. 2015) (holding that the district court abused i