IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`BOXCAST INC.,
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`Plaintiff,
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`v.
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`RESI MEDIA LLC, PUSHPAY, INC.,
`PUSHPAY HOLDINGS LTD.,
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`Defendants.
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`CIVIL ACTION NO. 2:21-CV-00217-JRG
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`ORDER
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`Before the Court is Defendant Resi Media LLC’s (“Resi”) Motion to Stay Proceedings
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`Pending Inter Partes Review (the “Motion”). (Dkt. No. 40). In the Motion, Resi asks the Court
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`to stay all proceedings in the above-captioned matter pending the Patent Trial and Appeal Board’s
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`(“PTAB”) inter partes review (“IPR”) of the patent-in-suit.
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`Plaintiff BoxCast Inc. (“BoxCast”) has asserted two patents against Resi: U.S. Patent Nos.
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`and 10,154,317
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`t”) (collectively, “the Asserted
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`Patents”). (Dkt. No. 28). Resi has filed IPR petitions, challenging the patentability of all claims
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`of the Asserted Patents. (Dkt. No. 40 at 1). The petitions challenging the Asserted Patents were
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`filed on October 15, 2021.1 (Id.). The PTAB has not yet decided whether to institute inter partes
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`review of the Asserted Patents.
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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 an
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`even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936).
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`1 IPR2022-66 and IPR2022-67.
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`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2008
`Page 1 of 3
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`“District courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay will
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`likely result in simplifying the case before the court.” NFC Techs. LLC v. HTC Am., Inc., Case
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`No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.). “Based
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`on th[ese] factors, courts determine whether the benefits of a stay outweigh the inherent costs of
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`postponing resolution of the litigation.” Id.
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`Where a motion to stay is filed before the PTAB institutes any proceeding, courts often
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`withhold a ruling pending action on the petition by the PTAB or deny the motion without prejudice
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`to refiling in the event that the PTAB institutes a proceeding. VirtualAgility Inc. v. Salesforce.com,
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`Inc., 759 F.3d 1307, 1316 (Fed. Cir. 2014) (citing Checkfree Corp. v. Metavante Corp., No. 12-
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`cv-15, 2014 WL 466023, at *1 (M.D. Fla. Jan. 17, 2014)); see also NFC Techs., 2015 WL
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`1069111, at *6. Indeed, this Court has a consistent practice of denying motions to stay when the
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`PTAB has yet to institute post-grant proceedings. Trover Group, Inc. v. Dedicated Micros USA,
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`No. 2:13-cv-1047-WCB, 2015 WL 1069179, at *6 (E.D. Tex. Mar. 11, 2015) (Bryson, J.) (“This
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`Court’s survey of cases from the Eastern District of Texas shows that when the PTAB has not yet
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`acted on a petition for inter partes review, the courts have uniformly denied motions for a stay.”).
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`Considering these circumstances, the Court concludes that Resi’s motion is premature, and
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`a stay of these proceedings in advance of the PTAB’s decision on whether or not to institute inter
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`partes review of the Asserted Patents should be denied. Accordingly, the Motion is
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`DENIED WITHOUT PREJUDICE to refiling of the same, which shall be permitted within
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`fourteen (14) days following the PTAB’s institution decision.
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`2
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`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2008
`Page 2 of 3
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`3
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`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2008
`Page 3 of 3
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