Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 1 of 13 PageID #: 1346
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`) C.A. No. 19-2083-NIQA-LAS
`)
`
`))))
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`
`)
`)
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`MONTEREY RESEARCH, LLC,
`
`Plaintiff,
`
`v.
`
`QUALCOMM INCORPORATED,
`QUALCOMM TECHNOLOGIES, INC., and
`QUALCOMM CDMA TECHNOLOGIES
`ASIA-PACIFIC PTE LTD.,
`
`Defendants.
`
`QUALCOMM INCORPORATED, QUALCOMM TECHNOLOGIES, INC., AND
`QUALCOMM CDMA TECHNOLOGIES ASIA-PACIFIC PTE LTD.’S
`OPENING BRIEF IN SUPPORT OF THEIR MOTION TO STAY
`PENDING INTER PARTES REVIEW
`
`OF COUNSEL:
`David Nelson
`Stephen Swedlow
`Nathan Hamstra
`Daniel R. Schwartz
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`191 N. Wacker Drive, Suite 2700
`Chicago, IL 60606
`(312) 705-7400
`
`Dated: February 18, 2021
`
`Karen E. Keller (No. 4489)
`Jeff Castellano (No. 4837)
`Nathan R. Hoeschen (No. 6232)
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 298-0700
`kkeller@shawkeller.com
`jcastellano@shawkeller.com
`nhoeschen@shawkeller.com
`Attorneys for Qualcomm Incorporated,
`Qualcomm Technologies, Inc., and
`Qualcomm CDMA Technologies Asia
`Pacific Pte Ltd.
`
`IPR2021-00167
`Nanya Technology Corp. v. Monterey Research, LLC
`Monterey Research LLC Exhibit 2011
`Ex. 2011, Page 1
`
`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 2 of 13 PageID #: 1347
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`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...............................................................................................................1
`FACTUAL AND PROCEDURAL BACKGROUND.........................................................2
`LOCAL RULE 7.1.3(C) DISCLOSURE .............................................................................4
`A.
`Statement Of The Nature And Stage Of The Proceedings ......................................4
`B.
`Summary Of Argument............................................................................................4
`LEGAL STANDARD ..........................................................................................................5
`ARGUMENT .......................................................................................................................6
`A.
`The Requested Stay Will Not Impose Undue Prejudice On Plaintiff ......................6
`B.
`A Stay Will Simplify The Issues And Make Litigation More Efficient ..................7
`C.
`The Stage Of Litigation Favors A Stay....................................................................8
`CONCLUSION ..................................................................................................................10
`
`
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`
`
`
`
`i
`
`Ex. 2011, Page 2
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 3 of 13 PageID #: 1348
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`AIP Acquisition LLC v. Level 4 Commc’ns, LLC,
` 2014 WL 1264200 (D. Del. Jan. 9, 2014) .................................................................................. 6
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc.,
` Civ. A. No. 18-1679, D.I. 123 (D. Del. Jun. 2, 2020)................................................................ 9
`BodyMedia, Inc. v. Basis Sci., Inc.,
` 2013 WL 2462105 (D. Del. Jun. 6, 2013) ................................................................................. 6
`British Telecommunications PLC v. IAC/InterActiveCorp,
` No. CV 18-366-WCB, 2020 WL 5517283 (D. Del. Sept. 11, 2020) ................................ 5, 6, 9
`Cephalon, Inc. v. Impax Labs., Inc.,
` 2012 WL 3867568 (D. Del. Sept. 6, 2012) ................................................................................ 5
`Cost Bros., Inc. v. Travelers Indem. Co.,
` 760 F.2d 58 (3d Cir. 1985)......................................................................................................... 5
`Ethicon, Inc. v. Quigg,
` 849 F.2d 1422 (Fed. Cir. 1988).................................................................................................. 5
`First Am. Title Ins. Co. v. MacLaren LLC,
` 2012 WL 769601 (D. Del. Mar. 9, 2012) .................................................................................. 8
`IOENGINE, LLC v. PayPal Holdings, Inc.,
` No. CV 18-452-WCB, 2019 WL 3943058 (D. Del. Aug. 21, 2019) ................................. 6, 7, 9
`Monterey Research, LLC v. Advanced Micro Devices, Inc.,
` Case No. 19-cv-2149, Dkt. 56 (D. Del. Jan. 5, 2021) .......................................................... 2,6,8
`Monterey Research, LLC v. Advanced Micro Devices, Inc.,
` Case No. 19-cv-2149, Dkt. 96 (D. Del. Jan. 5, 2021) ................................................... 2, 5,6,7,8
`Neste Oil Oyj v. Dynamic Fuels, LLC,
` No. 12-662, 2013 WL 424754 (D. Del. Jan. 31, 2013) ............................................................. 6
`NFC Tech. LLC v. HTC Am., Inc.,
` No. 2:13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ...................................... 5, 10
`RetailMeNot, Inc. v. Honey Sci. LLC,
` No. CV 18-937-CFC-MPT, 2020 WL 373341 (D. Del. Jan. 23, 2020) .................................... 9
`SenoRx, Inc. v. Hologic, Inc.,
` 2013 WL 144255 (D. Del. Jan. 11, 2013) .................................................................................. 8
`Smartflash LLC v. Apple Inc.,
` 621 F. App'x 995 (Fed. Cir. 2015) ........................................................................................... 10
`Uniloc 2017 LLC v. Vudu, Inc.,
` Civ. A. No. 19-0183, DI 72 (D. Del. Mar. 26, 2020) ................................................................ 6
`Statutory Authorities
`35 U.S.C. § 315 ............................................................................................................................... 2
`
`
`
`
`
`ii
`
`Ex. 2011, Page 3
`
`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 4 of 13 PageID #: 1349
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`I.
`
`INTRODUCTION
`
`A stay of the present case pending resolution of inter partes review (“IPR”) proceedings
`
`that have been initiated against all of the Patents-in-Suit promotes judicial efficiency, will
`
`streamline the issues in dispute, and will impose no prejudice on Plaintiff Monterey Research,
`
`LLC (“Monterey”), a licensing company that does not sell any commercial products. Between
`
`November 2019 and January 2020, Monterey initiated five lawsuits against various chipmakers
`
`alleging infringement of overlapping patents. The suit against Qualcomm was filed on
`
`November 1, 2020 and asserts infringement of U.S. Patent Nos. 6,459,625 (“the ’625 patent”);
`
`6,534,805 (“the ’805 patent”); 6,642,573 (“the ’573 patent”); 6,651,134 (“the ’134 patent”);
`
`6,680,516 (“the ’516 patent”); 6,765,407 (“the ’407 patent”); 7,572,727 (“the ’727 patent”); and
`
`7,977,797 (“the ’797 patent”) (collectively, “the Patents-in-Suit”) – all of which are directed to
`
`semiconductor layout and manufacturing processes.
`
`To date, Qualcomm has filed IPR petitions against claims of each of the Patents-in-Suit,
`
`and petitions filed by co-defendant AMD have been instituted against all asserted claims of the
`
`’407 and ’134 Patents, as well as certain claims of the ’805 Patent. Qualcomm filed its own
`
`petitions against the asserted claims of the ’407, ’134, and ’805 Patents, as well as the other
`
`Patents-in-Suit between August-November 2020 and expects institution decisions on its petitions
`
`to be made starting in March 2021. In addition, Monterey’s overlapping claims against AMD
`
`have been stayed and co-defendants STMicroelectronics and Nanya filed their own Motions to
`
`Stay their cases on January 29, 2021 and February 12, 2021, respectively.
`
`Just as this Court found when it stayed the AMD litigation, all of the factors at issue favor
`
`a stay. Monterey itself advocated for “synchrony” in the schedules of the five related cases it has
`
`filed and argued that the absence of a “common schedule” would “serve no purpose” and
`
`“squanders judicial resources.” Monterey Research, Case No. 19-cv-2149, (Opp. Br.) Dkt. 56 at
`
`
`
`1
`
`Ex. 2011, Page 4
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 5 of 13 PageID #: 1350
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`15, Ex. 14. Having stayed the AMD litigation, by Monterey’s own logic, judicial efficiency
`
`heavily favors staying this case as well. Moreover, while Qualcomm is confident that the
`
`PTAB’s review will result in invalidation of the asserted claims, even if it does not, at a
`
`minimum publication-based invalidity defenses will be streamlined pursuant to 35 U.S.C. § 315.
`
`Thus, regardless of the outcome of the IPR, a stay at this stage will simplify the case and
`
`promote efficient resolution of the dispute. Since Monterey does not practice the patents or
`
`compete with Qualcomm in the market, it will not be prejudiced by any stay pending completion
`
`of the IPR process.
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`Monterey filed the operative amended complaint in this case on February 14, 2020 (Dkt.
`
`16) alleging direct and indirect infringement of certain claims of the Patents-in-Suit against
`
`defendant Qualcomm Incorporated (“Qualcomm”). In its Amended Complaint, Monterey
`
`alleges that the inventions in its patents “stem from” work done by Cypress Semiconductor
`
`Corporation (“Cypress”). (Dkt. 16 at ¶ 33.) Monterey did not develop the claimed technology
`
`nor has it commercialized any products that utilize the alleged inventions. Instead, Monterey’s
`
`sole business is monetizing the patents it has acquired from other companies. Monterey
`
`Research, LLC v. Advanced Micro Devices, Inc., Case No. 19-cv-2149, Dkt. 96, n.1 (D. Del. Jan.
`
`5, 2021) (“AMD Stay Order”), Ex. 8.
`
`Between May-December 2020, four different companies filed IPR petitions against
`
`various claims of the Patents-in-Suit. The pending petitions are summarized as follows:
`
`Patent
`6,459,625
`6,534,805
`6,534,805
`6,534,805
`
`Petitioner
`Qualcomm
`AMD
`Qualcomm
`STMicro
`
`IPR
`IPR2021-00130
`IPR2020-00990
`IPR2020-01491
`IPR2021-00356
`
`Institution Date
`Filing Date
`(or expected)
`Accorded
`June 17, 2021
`November 5, 2020
`May 26, 2020 December 2, 2020
`August 20, 2020
`March 10, 2021
`December 23, 2020
`July 19, 2021
`
`
`
`2
`
`Ex. 2011, Page 5
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 6 of 13 PageID #: 1351
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`6,642,573
`6,651,134
`6,651,134
`6,651,134
`6,651,134
`6,680,516
`6,680,516
`6,765,407
`6,765,407
`7,572,727
`7,977,797
`
`Qualcomm
`Qualcomm
`AMD
`STMicro
`Nanya
`Qualcomm
`Nanya
`AMD
`Qualcomm
`Qualcomm
`Qualcomm
`
`IPR2021-00125
`IPR2020-01492
`IPR2020-00985
`IPR2021-00355
`IPR2021-00167
`IPR2021-00119
`IPR2021-00171
`IPR2020-00989
`IPR2020-01493
`IPR2021-00120
`IPR2021-00121
`
`June 3, 2021
`October 30, 2020
`March 10, 2021
`August 20, 2020
`May 26, 2020 December 2, 2020
`December 23, 2020
`July 19, 2021
`November 4, 2020
`June 17, 2021
`October 26, 2020
`May 18, 2021
`November 4, 2020
`June 3, 2021
`May 26, 2020 December 2, 2020
`August 20, 2020
`March 10, 2021
`October 26, 2020
`May 18, 2021
`October 26, 2020
`May 19, 2021
`
`By the time this Motion has been fully briefed, Qualcomm reasonably expects that the PTAB
`
`will have granted Qualcomm’s IPR challenges against three of the Patents-in-Suit, with
`
`institution decisions on the remaining patents following shortly thereafter.
`
`The Court entered a Scheduling Order on October 2, 2020. (Dkt. 44.) Pursuant thereto,
`
`Monterey served initial infringement contentions on November 20, 2020 and Qualcomm served
`
`invalidity contentions on January 11, 2021. The parties were working toward an agreed upon
`
`Protective Order to govern source code and other confidential evidence to be produced in this
`
`case, but were unable to reach a consensus and on January 28, Monterey abruptly filed a motion
`
`for entry of a supplemental Protective Order against three co-defendants: Qualcomm, Nanya, and
`
`STMicroelectronics. (Dkt. 62.) While self-styled as a motion to compel, Monterey’s motion
`
`actually seeks entry of a supplemental protective order that would allow it to access defendants’
`
`source code and other evidence made available for inspection without adequate protections
`
`against copying and disclosure. (Dkt. 62.) The motion ignores the fact that Qualcomm has
`
`already collected and made available for inspection responsive source code and physical design
`
`layout files, which Monterey has not bothered to inspect yet because of its recalcitrance over the
`
`source code provisions. Qualcomm responded to Monterey’s Motion on February 11, 2021.
`
`
`
`3
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`Ex. 2011, Page 6
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 7 of 13 PageID #: 1352
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`As a result of Monterey’s rush to motion practice, discovery has not commenced in
`
`earnest and Monterey has not even inspected much of the technical evidence (e.g., source code)
`
`Qualcomm has produced to date. No depositions have been taken. No substantive motions or
`
`briefing, including Markman, have been filed, much less decided. A Final Pretrial Conference is
`
`scheduled in this case for October 11, 2022. (Dkt. 44 at 19.) No trial date has been set yet.
`
`III. LOCAL RULE 7.1.3(C) DISCLOSURE
`
`A.
`
`Statement Of The Nature And Stage Of The Proceedings
`
`This case involves plaintiffs’ assertion of infringement of patent claims, all of which are
`
`currently subject to pending IPR petitions. The case is at its earliest stages. Monterey only
`
`served its infringement contentions on November 20, 2021. Expert discovery has not started.
`
`No dispositive motions have been filed or decided. No trial date has been set.
`
`B.
`
`Summary Of Argument
`
`The Court should exercise its discretion to stay the present litigation pending the outcome
`
`of Qualcomm’s IPR petitions because:
`
`(1)
`
`The proposed stay will not cause Monterey any undue prejudice from any delay
`
`and will not give Qualcomm an unfair tactical advantage in the case. Monterey is a non-
`
`practicing entity that does not compete with Qualcomm in any market.
`
`(2)
`
`The proposed stay will simplify the issues for trial. Monterey itself has argued
`
`that the related cases should be litigated on a synchronous schedule to promote judicial
`
`economy. This Court previously stayed Monterey’s related case against AMD, and
`
`STMicrolectronics and Nanya have filed their own motions to stay. And under any permutation
`
`of outcomes of the 15 pending IPR petitions relating to the patents-in-suit (8 of which were filed
`
`by Qualcomm), the litigation will be streamlined by their outcome.
`
`
`
`4
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`Ex. 2011, Page 7
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 8 of 13 PageID #: 1353
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`(3)
`
`The stage of litigation supports a stay because the “most burdensome” litigation
`
`milestones including completion of fact and expert discovery, dispositive motions and pretrial
`
`submissions, and trial have yet to be completed. Additionally, no trial date is set.
`
`IV.
`
`LEGAL STANDARD
`
`The decision to stay litigation lies within the sound discretion of the Court. AMD Stay
`
`Order at 1 (citing Cost Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985);
`
`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988)). “This inherent authority
`
`includes the discretion to stay judicial proceedings pending post-grant proceedings that will
`
`consider the validity of an issued patent.” See British Telecommunications PLC v.
`
`IAC/InterActiveCorp, No. CV 18-366-WCB, 2020 WL 5517283, at *2 (D. Del. Sept. 11, 2020)
`
`(citing Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (Ex. 4).
`
`“In deciding a motion to stay, the court considers three factors: ‘(1) whether the granting
`
`of a stay would cause the non-moving party to suffer undue prejudice from any delay or allow
`
`the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay
`
`will simplify the issues for trial; and (3) whether discovery is complete and a trial date set.’ AMD
`
`Stay Order at 1 (quoting Cephalon, Inc. v. Impax Labs., Inc., 2012 WL 3867568, at *2 (D. Del.
`
`Sept. 6, 2012) (Ex. 5)). “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.” British Telecom., 2020 WL 5517283 at *2 (citing NFC Tech. LLC v. HTC Am., Inc., No.
`
`2:13-cv-1058, 2015 WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015) (Ex. 10)). “Because of the
`
`benefits conferred by PTO post-grant proceedings, courts have concluded that” a “liberal policy”
`
`applies “to staying cases pending . . .post-grant proceedings.” Id. at *4.
`
`
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`5
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`Ex. 2011, Page 8
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 9 of 13 PageID #: 1354
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`V.
`
`ARGUMENT
`
`A.
`
`The Requested Stay Will Not Impose Undue Prejudice On Plaintiff
`
`Here, the Court has already stayed a companion case and has already concluded that in
`
`view of Monterey’s status as a non-practicing entity, the risk of undue prejudice from a stay is
`
`minimal. AMD Stay Order at 2 (“The relationship of the parties also favors granting a stay here
`
`since Plaintiff is a non-practicing entity and does not compete with Defendant.”) (citing AIP
`
`Acquisition LLC v. Level 4 Commc’ns, LLC, 2014 WL 1264200, at *3 (D. Del. Jan. 9, 2014)
`
`(Ex.1); Uniloc 2017 LLC v. Vudu, Inc., Civ. A. No. 19-0183, DI 72 at *2 (D. Del. Mar. 26, 2020)
`
`(Ex. 13)). As Monterey has averred, its sole business is licensing and its goal in this litigation is
`
`licensing revenue and/or a favorable settlement. Monterey Research, LLC v. Advanced Micro
`
`Devices, Inc., Case No. 19-cv-2149, Dkt. 56 at 18 (D. Del. Sept. 16, 2020) (Ex. 14). There is no
`
`reason why a stay pending resolution of the IPRs prejudices Monterey’s ability to remediate its
`
`alleged injury through this lawsuit. IOENGINE, LLC v. PayPal Holdings, Inc., No. CV 18-452-
`
`WCB, 2019 WL 3943058, at *6 (D. Del. Aug. 21, 2019) (general interest in “prompt
`
`enforcement of patent rights” is “insufficient, standing alone, to defeat a stay motion”) (Ex. 7).
`
`Monterey’s general complaint about delay is insufficient to establish any undue prejudice or
`
`undermine the justification for a stay. AMD Stay Order at 2 (“The mere potential for delay does
`
`not in itself establish undue prejudice.”) (citing BodyMedia, Inc. v. Basis Sci., Inc., 2013 WL
`
`2462105, at *1 (D. Del. Jun. 6, 2013) (Ex. 3)); see also British Telecom., 2020 WL 5517283 at
`
`*6 (D. Del. Sept. 11, 2020) (“the potential for delay does not, by itself, establish undue
`
`prejudice) (emphasis original) (quoting Neste Oil Oyj v. Dynamic Fuels, LLC, No. 12-662, 2013
`
`WL 424754, at *2 (D. Del. Jan. 31, 2013) (Ex. 9)).
`
`In addition, Qualcomm’s prompt efforts to seek review of the Patents-in-Suit demonstrate
`
`diligence and the absence of dilatory motive in seeking a stay. AMD Stay Order at 2 (finding
`
`
`
`6
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`Ex. 2011, Page 9
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 10 of 13 PageID #: 1355
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`that petitions filed with in “a few months of Monterey having filed its operative amended
`
`complaint” reflected “no dilatory motive”); IOENGINE, LLC v. PayPal Holdings, Inc., No. CV
`
`18-452-WCB, 2019 WL 3943058, at *5 (D. Del. Aug. 21, 2019) (Ex. 7). Qualcomm filed eight
`
`petitions between August 20, 2020 and November 5, 2020. Then, Qualcomm filed the present
`
`motion to stay within three months following submission of its final petition to the PTAB. AMD
`
`Stay Order at 2. Qualcomm has moved quickly to file its IPR petitions and seek a stay before the
`
`parties have invested in substantial litigation such as claim construction proceedings or
`
`dispositive motions. Id. Thus, this factor weighs in favor of a stay.
`
`B.
`
`A Stay Will Simplify The Issues And Make Litigation More Efficient
`
`This Court has already found that a stay is likely to simply the issues in this case. AMD
`
`Stay Order at 2. Three of the Patents-in-Suit are subject to ongoing, instituted IPR proceedings.
`
`Qualcomm has filed its own petitions addressing all asserted claims of the Patents-in-Suit and
`
`expects institution decisions on some within a month. As this Court has already found:
`
`Should all of the asserted claims be found invalid, this litigation would be
`“simplified” because it would be concluded. Alternatively, should even some of
`the asserted claims be found invalid, that finding would reduce the number of
`issues left to be litigated. . . . Should the claims survive the IPR process, this
`Court will benefit from the PTAB’s expertise and review. . . Moreover, if some
`or all of the claims are found not invalid, litigation is likely to be simplified due to
`the estoppel effect on Defendant of the PTAB findings relating to certain prior art.
`Thus, the simplification factor favors a stay.
`
`AMD Stay Order at 2 (collecting cases). By the time briefing is completed on this motion to
`
`stay, the PTAB will likely have decided whether to institute at least the first filed petitions.
`
`Thus, this Motion does not fall within the ambit of the case law addressing pre-institution stays.
`
`Here, three patents are already subject to instituted IPR proceedings (two covering all claims
`
`asserted against Qualcomm) and this Motion will be fully briefed by the time that at least
`
`
`
`7
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`Ex. 2011, Page 10
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 11 of 13 PageID #: 1356
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`Qualcomm’s first three petitions (IPR2020-01491, IPR2020-01492, IPR2020-01493) on the
`
`’805, ’134, and ’407 Patents will be instituted (or not) by the PTAB.
`
`A prompt stay is particularly appropriate in this case because Monterey has argued to this
`
`Court that maintaining the “synchrony” between the five cases it filed is “critical . . . to judicial
`
`efficiency.” Monterey Research, Case No. 19-cv-2149, (Opp. Br.) Dkt. 56 at 15 (Ex. 14). As
`
`Monterey argued “this case is one of five Related Actions” that should “progress[] in a
`
`coordinated manner under a common schedule.” Id. Staying one case but not the others “will
`
`guarantee piecemeal, duplicative litigation,” “would serve no purpose,” “obstructs coordination
`
`of all related actions,” and “squanders judicial resources.” Id. Monterey’s advocacy for keeping
`
`the related actions on the same schedule militates heavily in favor of staying the present case just
`
`as this Court stayed the AMD litigation and should the STMicroelectronics case in response to its
`
`pending motion as well. As Monterey argued, there is little to be gained by staying one case and
`
`not the others, and since this Court has already stayed AMD, all of the factors relating to judicial
`
`economy cited by Monterey now favor staying this case.
`
`C.
`
`The Stage Of Litigation Favors A Stay
`
`None of the critical litigation milestones that impact the stay analysis have occurred in
`
`the present case. In considering this factor, the Court generally considers “‘whether discovery is
`
`complete and whether a trial date has been set.’” AMD Stay Order at 2 (quoting First Am. Title
`
`Ins. Co. v. MacLaren LLC, 2012 WL 769601, at *4 (D. Del. Mar. 9, 2012) (Ex. 6)). “Staying a
`
`case in its early stages advances judicial efficiency and prevents the court and the parties from
`
`expending resources on claims that may be rendered invalid.” Id. (citing SenoRx, Inc. v.
`
`Hologic, Inc., 2013 WL 144255, at *5-6 (D. Del. Jan. 11, 2013) (Ex. 12)). Stays are most
`
`“favored” when, as here, “the most burdensome stages of the case” – completion of fact and
`
`expert discovery, filing and responding to pretrial motions, preparing for trial, and going to trial
`
`
`
`8
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`Ex. 2011, Page 11
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`

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`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 12 of 13 PageID #: 1357
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`– “all lie in the future.” Id. (citing Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., Civ. A.
`
`No. 18-1679, D.I. 123 at *2 (D. Del. Jun. 2, 2020) (Ex. 2)).
`
`However, even in cases where there has been “substantial progress” including completion
`
`of fact discovery and claim construction, Courts often find that the stage of litigation favors a
`
`stay because of the magnitude and cost of tasks left to be completed including, most notably,
`
`trial. British Telecom, 2020 WL 5517283 at *5-6 (the “stage of litigation” factor weighed in
`
`favor of a stay even though fact discovery was complete and expert discovery was underway);
`
`RetailMeNot, Inc. v. Honey Sci. LLC, No. CV 18-937-CFC-MPT, 2020 WL 373341, at *2 (D.
`
`Del. Jan. 23, 2020) (the parties service of written discovery and production of “hundreds of
`
`thousands of pages of documents” does not weigh against a stay) (Ex.11); see also IOENGINE,
`
`LLC v. PayPal Holdings, Inc., No. CV 18-452-WCB, 2019 WL 3943058, at *5 (D. Del. Aug. 21,
`
`2019) (“While IOENGINE’s observations indicate that there has been significant progress in the
`
`two cases, the most burdensome stages of the cases—completing discovery, preparing expert
`
`reports, filing and responding to pretrial motions, preparing for trial, going through the trial
`
`process, and engaging in post-trial motions practice—all lie in the future.”) (Ex. 7).
`
`Here, the parties have exchanged initial contentions but discovery remains at its very
`
`earliest stages. Monterey has yet to review the source code and design files that Qualcomm has
`
`made available for review, conduct any depositions, or provide the written discovery it agreed
`
`should take place after contentions were exchanged (e.g., written discovery regarding
`
`Monterey’s claimed priority date and documentary evidence of alleged conception and reduction
`
`to practice). Neither claim construction nor expert discovery has been completed; no dispositive
`
`
`
`9
`
`Ex. 2011, Page 12
`
`

`

`Case 1:19-cv-02083-NIQA-LAS Document 71 Filed 02/18/21 Page 13 of 13 PageID #: 1358
`
`motions have been filed or heard; and no trial date has been set. Thus, the early stage of the case
`
`favors a stay.1
`
`VI. CONCLUSION
`
`Since all three factors considered by this Court favor staying the litigation pending
`
`completion of Qualcomm’s IPR petitions filed against the Patents-in-Suit, Qualcomm
`
`respectfully requests that this Court grant its motion to stay.
`
`
`1 Notably, evaluation of this factor is forward-looking, not backward looking. Thus that
`“there has been substantial progress” in a litigation does not mean that this factor weighs against
`a stay. What matters is what “parts of the case . . . lie in the future” and whether the IPR
`proceedings are likely to eradicate or ease the burden of those future proceedings. See CyWee
`Grp. Ltd. v. Samsung Elec. Co., No. 2:17-cv-140, Dkt. No. 331, at 13; see also Smartflash LLC
`v. Apple Inc., 621 F. App'x 995, 1005 (Fed. Cir. 2015); NFC Tech., 2015 WL 1069111, at *3
`
`
`
`10
`
`Ex. 2011, Page 13
`
`

`

`Case 1:19-cv-02083-NIQA-LAS Document 71-1 Filed 02/18/21 Page 1 of 4 PageID #: 1359
`
`
`
`
`Exhibit 1
`
`
`
`
`
`Ex. 2011, Page 14
`
`

`

`SaPSRquidCOSOESVMRESinthichtORYLEONOtReportethPclSlip. (ZoAAAe 2 Of 4 PagelD #: 1360
`
`2014 WL 12642000
`Only the Westlaw citation is currently available.
`United States District Court, D. Delaware.
`
`AIP ACQUISITIONLLC,Plaintiff,
`Vv.
`
`LEVEL 3 COMMUNICATIONS,LLC, Defendant.
`AIP Acquisition LLC,Plaintiff,
`v.
`
`Cablevision Systems Corporation,
`and CSC Holdings, LLC, Defendants.
`AIP Acquisition LLC,Plaintiff,
`v.
`
`Charter Communications,Inc.,
`and Charter Communications
`
`Holding Company, LLC, Defendants.
`AIP Acquisition LLC,Plaintiff,
`Vv.
`
`ComcastCorporation, Comcast Cable
`Communications, LLC, Comcast Cable
`Communications Management, LLC,
`ComcastIP Phone, LLC, and Comcast
`Business Communications, LLC, Defendants.
`AIP Acquisition LLC,Plaintiff,
`v.
`
`Cox Communications, Inc. and
`CoxCom, LLC, Defendants.
`AIP Acquisition LLC,Plaintiff,
`v.
`
`Time WarnerCable Inc., Time Warner Cable
`Enterprises LLC, Twe Communications, LLC,
`and TWCDigital Phone LLC, Defendants.
`
`C.A. No. 12—617—GMS,C.A. No. 12—
`1688—GMSthrough 12—1692—GMS
`|
`Signed 01/09/2014
`
`Attorneys and Law Firms
`
`Richard D. Kirk, Stephen B. Brauerman, Bayard, P.A.,
`Wilmington, DE, Damir Cefo, Pro Hac Vice, Francisco A.
`Villegas, Pro Hac Vice, Joyce E. Kung, Pro Hac Vice, Karen
`H. Bromberg, Pro Hac Vice, for Plaintiff.
`
`Kelly E. Farnan, Richards, Layton & Finger, PA Wilmington,
`DE, Daniel L. Reisner, Pro Hac Vice, David Benyacar Pro
`Hac Vice, David Soofian, Pro Hac Vice, for Defendant.
`
`ORDER
`
`Gregory M. Sleet, CHIEF, UNITED STATES DISTRICT
`JUDGE
`
`the plaintiff, AIP Acquisition
`*1 On May 17, 2012,
`LLC (“AIP”), filed suit against Level 3 Communications,
`LLC (“Level 3”) alleging,
`inter alia,
`infringement of
`Pus. Patent No. 7,724,879 (“the '879 patent”) (12-
`617-GMS, DJ. D.' AIP filed five additional patent
`infringement actions on December 11, 2012, asserting the
`879 patent against: Cablevision Systems Corporation
`and CSC Holdings, LLC (“CSC”); Charter Communications
`Inc.
`and Charter Communications Holding Company,
`LLC (“Charter”); Comcast Corporation, Comcast Cable
`Communications, LLC, Comcast Cable Communications
`Management, LLC, Comcast
`IP Phone, LLC,
`and
`Comcast Business Communications, LLC (“Comcast”); Cox
`Communications, Inc. and CoxCom, LLC (“Cox”); and Time
`Warner Cable Inc., Time Warner Cable Enterprises LLC,
`TWC Communications, LLC, and TWC Digital Phone LLC
`(“Time Warner”) (collectively, the “Cable defendants” and
`the “Cable Cases”) (see, e.g., 12-1688—GMS, D.I. 1).? On
`May 21, 2013, Level 3 filed a petition for an inter partes
`review (“IPR”) of the = '879 patent with the United States
`Patent and Trademark Office (“PTO”). (12-617—GMS, D.I.
`27, Ex. D.) The PTOgranted Level3's IPR petition as to every
`claim ofthe = '879 patent on October 31, 2013,(id., D.I. 53,
`Ex. 23). Presently before the court is Level 3's Motion to Stay
`Pending Inter Partes Review (id., D.I. 25) 3,
`
`A decision to stay litigation lies within the sound discretion
`ofthe court and represents an exercise ofthe court's “inherent
`power to conserve judicial resources by controlling its own
`docket”. BcostBros., Inc. v. Travelers Indem. Co., 760 F.2d
`58, 60 (3d Cir. 1985). It is well settled that this authority
`extends to patent cases in which a PTO review has been
`requested. See P Ethicon, Inc. v. Quigg, 849 F.2d 1422,
`1426-27 (Fed. Cir. 1988) (citations omitted) (“Courts have
`inherent power to managetheir dockets and stay proceedings,
`including the authority to order a stay pending conclusion
`
`
`
`WESTLAW©2021 Thomson Reuters. No claim tooriging
`
`
`Ex. 2011, Page 15
`
`

`

`SPSSqhirkinPSOFSINhinTrichtORS!LECNotRbpotlathPealSlipp. 2oAe 3 Of 4 PagelD #: 1361
`
`of a PTO reexamination.”). The court performs a balancing
`analysis using the following three factors to determine if
`a stay is appropriate: “(1) whether a stay would unduly
`prejudice or present a clear tactical disadvantage to the non-
`moving party; (2) whether a stay will simplify the issues in
`question andtrial of the case; and (3) whether discovery is
`complete and whether a trial date has been set.” First Am.
`Title Ins. Co. v. McLaren LLC, No. 10—363—GMS, 2012 WL
`769601, at *4 (D. Del. Mar. 9, 2012).
`
`*2 After considering the parties' positions as set forth in their
`papers,as well as the applicable law, the court finds that a stay
`pendingresolution ofthe = '879 IPRproceedingis warranted
`here becauseit will simplify issues before the court and will
`not unduly prejudice AIP.
`
`A stay will simplify issues before court and conserve judicial
`resources. * In its decision to grant Level 3's IPR petition,
`the PTO concludedthat Level 3 “demonstrate[d] a reasonable
`likelihood of prevailing on its challenge to the patentability
`of[all claims] ofthe = '879 patent.” (12-617—-GMS,D.I. 53,
`Ex. 23 at 33.) As such, a stay will allow the court and the
`parties to avoid wasting resources on a Markmanhearing and
`at trial to address claims that have a “reasonable likelihood”
`of being amendedor canceled. > See In re Bear Creek Techs.
`Inc., No. 12—md—2344-GMS, 2013 WL 3789471, at *3 n.8
`(D.Del. Jul. 17, 2013) (staying multiple actions pending inter
`partes reexamination of a commonasserted patent). If the
`= '879 patentis not invalidated, the court and the parties will
`have the benefit of the IPR record in any post-stay Markman
`process. See Gioello Enters.
`Itd. v. Mattel, Inc., No. 99-
`375—GMS, 2001 WL 125340, at *1 (D. Del. Jan. 29, 2001).
`Additionally, a stay will simplify issues at trial because Level
`3 will be estopped from asserting invalidity arguments that
`were raised or reasonably could have been raised during the
`IPR proceeding. See P35 U.S.C. § 315(e)(2). Issues in the
`Cable Cases will also be simplified attrial because the Cable
`defendants havestipulated to a limited estoppel based upon
`invalid