Case 2:19-cv-00152-JRG Document 133 Filed 07/17/20 Page 1 of 6 PageID #: 4399
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:19-CV-00152-JRG
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`§§§
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`SOLAS OLED LTD.,
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`v.
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`LTD.,
`CO.,
`SAMSUNG DISPLAY
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Plaintiff,
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`Defendants.
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`§
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendants Samsung Display Co., Ltd., Samsung Electronics Co., Ltd.,
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`and Samsung Electronics America, Inc.’s (collectively “Samsung”) Renewed Motion to Stay
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`Proceedings Pending Inter Partes Review (the “Motion”). (Dkt. No. 118.) In the Motion, Samsung
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`requests that the Court stay this case in view of the inter partes reviews (“IPR”) instituted by the
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`Patent Trial and Appeal Board (“PTAB”) of the three asserted patents in this case. (Id. at 1.) For
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`the reasons described herein, the Court finds that the Motion should be and hereby is DENIED.
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`I.
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`BACKGROUND
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`Plaintiff Solas OLED Ltd. (“Solas”) asserts that Samsung infringes three of its patents:
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`U.S. Patent Nos. 6,072,450 (the “’450 Patent”); 7,446,338 (the “’338 Patent”); and 9,256,311 (the
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`“’311 Patent) (collectively, the “Asserted Patents”). (Dkt. No. 15 at 1.) On December 20, 2019,
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`Samsung moved to stay this case based on its petitions for IPR of the Asserted Patents (the
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`“Original Motion”) (Dkt. No. 56.) However, the Court denied the Original Motion as premature
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`because the PTAB had not yet instituted IPR proceedings on the Asserted Patents. (Dkt. No. 69.)
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`Over the course of the six months following Samsung’s Original Motion and the Court’s Order
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2005
`Page 1
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`Case 2:19-cv-00152-JRG Document 133 Filed 07/17/20 Page 2 of 6 PageID #: 4400
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`addressing the same, the Court has conducted claim construction proceedings and fact discovery
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`has closed. (See Dkt. No. 95.) Over this same time period, the PTAB has instituted an IPR of each
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`of the Asserted Patents: the ’311 Patent on April 1, 2020; the ’450 Patent on May 8, 2020; and the
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`’338 Patent on June 23, 2020. Despite the October 5, 2020 trial setting in this case, Samsung files
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`the instant Motion to stay this case in light of the aforementioned instituted IPRs.
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`II.
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`LEGAL STANDARD
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`The district court has the inherent power to control its own docket, including the power to
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`stay proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997). How to best manage the court’s
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`docket “calls for the exercise of judgment, which must weigh competing interests and maintain
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`an even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936). “District courts typically
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`consider three factors when determining whether to grant a stay pending inter partes review of a
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`patent in suit: (1) whether the stay will unduly prejudice the nonmoving party, (2) whether the
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`proceedings before the court have reached an advanced stage, including whether discovery is
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`complete and a trial date has been set, and (3) whether the stay will likely result in simplifying the
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`case before the court.” NFC Techs. LLC v. HTC Am., Inc., Case No. 2:13-cv-1058-WCB, 2015
`WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.).
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`III. DISCUSSION
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`A. A Stay Will Prejudice Solas.
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`Samsung argues that Solas will not suffer any prejudice if the Court stays this case because
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`Solas is a non-practicing entity, and as such, monetary relief will be sufficient to compensate Solas
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`for any damages and a stay will not diminish that relief. (Dkt. No. 118 at 3–4 (citing Cellular
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`Commc’ns Equip., LLC v. Samsung Elecs. Co., Ltd., No. 6:14-cv-759, 2015 WL 11143485, at *2
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`(E.D. Tex. Dec. 16, 2015)).) Samsung further argues that Defendants, on the other hand, will be
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2005
`Page 2
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`prejudiced by the absence of a stay because they would be forced to incur the expense and burden
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`of defending against infringement claims based on patents that could be invalidated by the PTAB.
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`(Id. at 4.)
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`Solas responds that the imposition of a stay this late in the case will unfairly prejudice
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`Solas. (Dkt. No. 123 at 9.) Solas notes that the Final Written Decisions on the aforementioned
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`IPRs could not be issued before the scheduled infringement trial in this case and given the late
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`stage of litigation, a majority of the costs associated with litigation have already been incurred.
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`(Id.) Solas further argues that permitting a stay would deprive Solas of its chosen forum and give
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`Samsung a risk-free forum to invalidate the Asserted Patents. (Id. at 10.)
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`This factor weighs heavily against granting a stay in this case. The Court is not persuaded
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`by Samsung’s argument that because Solas’ is not a competitor of Samsung, a delay to this
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`litigation will result in no prejudice to Solas. In Cellular Communications, on which Samsung
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`relies to argue that a delay will not cause a non-practicing entity prejudice, the court stated that the
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`plaintiff “makes no specific allegations of prejudice in this case other than the natural delay that
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`would occur when a stay is granted in any case.” See Cellular Commc’ns Equip., LLC, 2015 WL
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`11143485, at *2. Here, Solas has made specific allegations of prejudice. Specifically, Solas points
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`out that with fact and expert discovery completed, it has already incurred the majority of the
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`expenses associated with this litigation. (Dkt. No. 123 at 9.) Further, there is caselaw from this
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`Court that contradicts the Cellular Communications rationale concerning prejudice. See
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`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-cv-213-JRG-RSP, 2015 WL
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`627887, at *2 (E.D. Tex. Jan 29, 2015 (“[T]he mere fact that Rembrandt is not currently practicing
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`the patents does not mean that, as a matter of law, it is not prejudiced by a substantial delay of an
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`imminent trial date.”) (emphasis added). In Rembrandt, the court found that granting a stay would
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2005
`Page 3
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`prejudice the plaintiff in light of the fact that trial was a month away. Id. Here, discovery is
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`completed and trial is only a few months away. Accordingly, the Court finds that this factor weighs
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`heavily against a stay at this advanced stage of litigation.
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`B. This Case Has Reached an Advanced Stage.
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`Samsung argues that it has been diligent in filing the IPR petitions and moving to stay this
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`case, and as such, this factor weighs in favor of a stay. (Dkt. No. 118 at 5 (citing e-Watch Inc. v.
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`Apple, Inc., No. 2:13-cv-1061-JRG-RSP, 2015 WL 12915668, at *3 (E.D. Tex. Mar. 25, 2015)).)
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`Samsung argues that when the Original Motion was filed in this litigation, the case was in its
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`infancy and this should be accorded some weight by the Court. (Id.)
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`Solas responds that courts routinely deny stay motions in cases that are not nearly as far
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`along as this one. (Dkt. No. 123 at 2 (citing Realtime Data, LLC v. Rackspace US, Inc., No. 6:16-
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`cv-00961, 2017 WL 3149142, at *1–2 (E.D. Tex. July 25, 2017); NetFuel, Inc. v. Cisco Sys., Inc.,
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`No. 5:18-cv-02352-EJD, 2020 WL 836714, at *1 (N.D. Cal. Feb. 20, 2020); Telemac Corp. v.
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`Teledigital, Inc., 450 F. Supp 2d 1107, 1111 (N.D. Cal. 2006); International Test Solutions, Inc.
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`v. Mipox International Corp., No. 16-cv-00791-RS, 2017 WL 1316549, at *2 (N.D. Cal. Apr. 10,
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`2017.)).) Solas argues each of these cases were not as far as long as this case when stays were
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`denied in those cases. (Id.at 3.) Thus, Solas argues, the Court should deny the stay sought here.
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`(Id.)
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`While it is true that the Court must accord some weight to the timing of Samsung’s Original
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`Motion, in view of the unique posture and timing of this case relative to the timing of the instituted
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`IPRs, the Court is of the opinion that this factor weighs against a stay in this case. In the e-Watch
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`case relied on by Samsung, the Court held that some weight must be given to the timing of the
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`defendant’s initial motion to stay the case, and ultimately held that the case should be stayed. e-
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2005
`Page 4
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`Watch Inc., 2015 WL 12915668, at *3. However, in that case, claim construction proceedings had
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`not yet commenced, fact discovery had not closed, and expert discovery had no closed. (Id.)
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`Conversely, in this case, the Court has issued a claim construction order and all discovery has
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`closed. In fact, the deadline to file Daubert motions and other dispositive motions was July 13,
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`2020. (Dkt. No. 95.)Accordingly, due to the extremely advanced stage of this case, the Court finds
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`that this factor weighs against granting a stay.
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`C. The Stay Will Likely Simplify the Case.
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`Samsung argues that the IPRs stand to drastically simplify this case because they concern
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`each asserted claim of each of the Asserted Patents. (Dkt. No. 118 at 6.) In support of this
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`argument, Samsung cites to the USPTO’s May 2020 trial statistics1 which reveal that “80% of
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`Final Written Decisions have resulted in at least one claim being found invalid, and 62% of Final
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`Written Decisions have found all instituted claims invalid.” (Id. at 7.)
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`Solas responds that the PTAB’s decision to institute IPR is not nearly as definitive as
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`Samsung portrays. (Dkt. No. 123 at 5.) In view of the Supreme Court’s Decision in SAS Insitute,
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`Inc. v. Iancu, Solas argues that the PTAB is precluded from instituting IPRs for only some of a
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`patent’s asserted claims, but instead must address all of the asserted claims. (Id. (citing 138 S. Ct.
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`1348 (2018)).) Accordingly, Solas argues that any institution decision occurring after SAS provides
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`a weaker inference that the PTAB will invalidate a claim. (Id. at 6 (citing Peloton Interactive, Inc.
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`v. Flywheel Sports, Inc., No. 2:18-cv-390-RWS-RSP, 2019 WL 3826051, at *1–2 (E.D. Tex. Aug.
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`14, 2019)).) Finally, Solas argues that relying on only post-SAS statistics, the likelihood of a claim
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`being invalidated falls significantly. (Id. at 7.)
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`1 Available at https://www.uspto.gov/sites/default/files/documents/trial_statistics_20200531.pdf (last accessed July 8,
`2020).
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2005
`Page 5
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`

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`Case 2:19-cv-00152-JRG Document 133 Filed 07/17/20 Page 6 of 6 PageID #: 4404
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`This factor weighs in favor of a stay. Regardless of whether the IPRs result in invalidating
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`the Asserted Claims, there is still a substantial likelihood that the issues will be narrowed. Each
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`asserted claim will either be invalidated by the PTAB or Samsung will be precluded from making
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`certain invalidity arguments in this case. See 35 U.S.C. § 315(e)(2); see also Intelllectual Ventures
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`I LLC v. T-Mobile USA, Inc., et al., No. 2:17-cv-577-JRG, Dkt. No. 255 at 7 (E.D. Tex. Dec. 13,
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`2018). Therefore, regardless of the result of the instituted IPRs, the issues before the Court will be
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`simplified, and as such, this factor weighs in favor of a stay.
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`IV. CONCLUSION
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`After weighing all the factors that bear on whether a staying pending IPR is warranted, the
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`Court finds that the balance of those factors weighs against grating a stay. According, in the
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`exercise of its discretion, the Court DENIES the Samsung’s Renewed Motion to Stay Proceedings
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`Pending Inter Partes Review (Dkt. No. 118).
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 17th day of July, 2020.
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2005
`Page 6
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