IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CIVIL ACTION NO. 2:19-CV-00257-JRG
`
`§§§§§§§§§§§§
`
`ORDER
`
`OYSTER OPTICS, LLC,
`
`Plaintiff,
`
`v.
`
`INFINERA CORPORATION, CORIANT
`NORTH AMERICA, LLC, CORIANT
`OPERATIONS, INC., CORIANT (USA)
`INC.,
`
`Defendants.
`
`Before the Court is Defendants Infinera Corporation, Coriant (USA) Inc., Coriant North
`
`-Urged Motion to Stay
`
`Pending Inter Partes
`
`Motion, Infinera requests that the Court stay this case in view of the inter partes
`
`instituted by the Patent Trial and Appeal
`
`case. (Id. at 1.) For the reasons described herein, the Court finds that the Motion should be and
`
`hereby is DENIED.
`
`I.
`
`BACKGROUND
`
`Id. at 1.) On January 17, 2019, Infinera moved to stay this case
`
`infringes U.S. Patent No.
`
`the Court denied the Original Motion as premature because the PTAB had not yet instituted IPR
`
`proceedings on the
`
`. (Dkt. No. 62.) Since that denial, the case has continued to progress,
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 1 of 6
`
`
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CIVIL ACTION NO. 2:19-CV-00257-JRG
`
`§§§§§§§§§§§§
`
`ORDER
`
`OYSTER OPTICS, LLC,
`
`Plaintiff,
`
`v.
`
`INFINERA CORPORATION, CORIANT
`NORTH AMERICA, LLC, CORIANT
`OPERATIONS, INC., CORIANT (USA)
`INC.,
`
`Defendants.
`
`Before the Court is Defendants Infinera Corporation, Coriant (USA) Inc., Coriant North
`
`-Urged Motion to Stay
`
`Pending Inter Partes
`
`Motion, Infinera requests that the Court stay this case in view of the inter partes
`
`instituted by the Patent Trial and Appeal
`
`case. (Id. at 1.) For the reasons described herein, the Court finds that the Motion should be and
`
`hereby is DENIED.
`
`I.
`
`BACKGROUND
`
`Id. at 1.) On January 17, 2019, Infinera moved to stay this case
`
`infringes U.S. Patent No.
`
`the Court denied the Original Motion as premature because the PTAB had not yet instituted IPR
`
`proceedings on the
`
`. (Dkt. No. 62.) Since that denial, the case has continued to progress,
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 1 of 6
`
`
`
`claim construction has essentially completed,1 and fact discovery is set to close on August 17,
`
`2020. (See Dkt. No. 48.) Over this same time period, the PTAB has instituted an IPR on all but
`
`one of the asserted claims. (Dkt. No. 82 at 1.) Despite one claim not being instituted, Infinera files
`
`the instant Motion to stay the case in light of the aforementioned instituted IPR.
`
`II.
`
`LEGAL STANDARD
`
`The district court has the inherent power to control its own docket, including the power to
`
`stay proceedings. Clinton v. Jones
`
`docket
`
`n
`
`Landis v. N. Am. Co., 299 U.S. 248, 254 55 (1936).
`
`consider three factors when determining whether to grant a stay pending inter partes review of a
`
`patent in suit: (1) whether the stay will unduly prejudice the nonmoving party, (2) whether the
`
`proceedings before the court have reached an advanced stage, including whether discovery is
`
`complete and a trial date has been set, and (3) whether the stay will likely result in simplifying the
`
`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.).
`
`III.
`
`DISCUSSION
`
`1. A Stay Will Prejudice Oyster.
`
`Infinera argues that Oyster will not suffer any prejudice if the Court stays this case because
`
`Infinera is a non-
`
`delay in collecting damages does not constitute undue preju
`
`Id. at 3 (citing Cellular
`
`1 All briefing related to claim construction has completed and the Court would have held the claim construction
`hearing on June 16, 2020. (See Dkt. No. 48.) The parties, however, waived their hearing and submitted the issues on
`the papers. (Dkt. No. 81.) The Court has been
`construction order.
`
`2
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 2 of 6
`
`
`
`, No. 6:14-cv-759, 2015 WL 11143485, at *2
`
`(E.D. Tex. Dec. 16, 2015)).) Infinera further argues that it, on the other hand, will suffer
`
`a stay, because Infinera would continue to incur the
`
`expense and burden of defending against infringement allegations of patent claims that the PTAB
`
`Id. at 4.)
`
`Oyster responds that the imposition of a stay will unfairly prejudice it. (Dkt. No. 85 at 6.)
`
`at least three to six months after this action could have alre
`
`Id. at 6 7.)
`
`v. Twitter, Inc., No. Civ. 09-865- LPS, 2010 WL 5149351, at *3 (D. Del. Dec. 13, 2010)).) Third,
`
`Id. at 7 (quoting Cooper Notification, Inc.
`
`Id. at 8.) As such, Oyster argues that a stay for
`
`-
`
`its claims against Infinera
`
`Id.)
`
`This factor weighs heavily against granting a stay in this case. The Court is not persuaded
`
`will result in no prejudice to Oyster. In Cellular Communications, on which Infinera relies to argue
`
`that a delay will not cause a non-practicing entity prejudice, the court stated that the plaintiff
`
`11143485, at *2. Here, Oyster has made specific allegations of prejudice. Specifically, Oyster
`
`points out that the case is already at a late stage. (Dkt. No. 85 at 7.) Furthermore, Oyster notes that
`
`, 2015 WL
`
`3
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 3 of 6
`
`
`
`the PTAB would not issue its Final Written Decision until at least three months after the current
`
`trial date for this case. (Id. at 8.) Further, there is caselaw from this Court that finds that non-
`
`practicing entities may very well be prejudiced by the delay imposed by a stay. See Rembrandt
`
`Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-cv-213-JRG-RSP, 2015 WL 627887, at *2
`
`does not mean that, as a matter of law, it is not prejudiced by a substantial delay of an imminent
`
`trial date
`
`(emphasis added); Realtime Data LLC v. Actian Corp., No. 6:15-CV-463-RWS-JDL,
`
`2016 WL 3277259, at
`
`entity and is merely pursuing monetary damages would not preclude [plaintiff] from experiencing
`
`Accordingly, the Court finds that this
`
`factor weighs heavily against a stay.
`
`2. The Current Stage of the Litigation Does Not Favor a Stay
`
`Infinera argues that they have been prompt in re-
`
`Id.
`
`(Id.)
`
`Oyster responds that courts routinely deny stay motions in cases that are not nearly as far
`
`along as this one. (Dkt. No. 85 at 5 6 (citing Realtime Data, LLC v. Rackspace US, Inc.,
`
`No. 6:16-cv-00961, 2017 WL 3149142, at *1 2 (E.D. Tex. July 25, 2017); NetFuel, Inc. v. Cisco
`
`Sys., Inc., No. 5:18-cv-02352-EJD, 2020 WL 836714, at *1 (N.D. Cal. Feb. 20, 2020); Telemac
`
`Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal. 2006); Int Test Solns., Inc. v.
`
`Mipox Int Corp., No. 16-cv-00791-RS, 2017 WL 1316549, at *2 (N.D. Cal. Apr. 10, 2017.);
`
`Asetek Holdings, Inc. v. Cooler Master Co., Ltd., 2014 WL 1350813, at *4 (N.D. Cal. April 3,
`
`4
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 4 of 6
`
`
`
`2014)).) Oyst
`
`Id. at 6.) As such, Oyster asserts that
`
`this case is at an advanced stage and should not be stayed. (Id.)
`
`While fact discovery is almost but not yet completed, the case is clearly at an advanced
`
`stage. Fact discovery is closing in about a month and trial is only six months away. Further, the
`
`claim construction briefing and argument is completed. As such, the Court finds that the late stage
`
`of this case weighs against granting a stay.
`
`3. The Stay Will Likely Not Simplify the Issues in this Case.
`
`Infinera argues that the IPR stands to drastically simplify this case because it concerns all
`
`asserted claims except one and there is a likelihood that the instituted claims will be found invalid.
`
`(Dkt. No. 82 at 5.) Infinera further asserts that the arguments and claim amendments made by
`
`relevant to the issues before this Court. (Id.) Infinera argues that judicial economy would be best
`
`there is a risk that the resources used in litigating this case may end up being unnecessary because
`
`Id. at 6 7.) Further, Infinera asserts
`
`is
`
`(Id. at 7.)
`
`Oyster responds that the fact that one asserted claim was not instituted weights heavily
`
`against a stay. (Dkt. No. 85 at 3.)
`
`matter what, at least one claim of the asserted patent will remain viable and will need to proceed
`
`Id.) Oyster also states that this case is not like others where whole patents are instituted
`
`and other patents in the case are not. (Id. (quoting No Spill, Inc. v. Scepter Canada, Inc., No.
`
`18-2681-JAR-KGG, 2020 WL 1528542, at *3 (D. Kan. Mar. 31, 2020)).) Furthermore, Oyster
`
`5
`
`NetNut Ltd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 5 of 6
`
`
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`notesthat is has other non-patent claims thatit is asserting against Infinera. (/d.) As such, Oyster
`
`argues that regardless of the outcome of the IPR, there will still be many issues for this Court to
`
`resolve. Oyster arguesthat the case will not really be simplified even if the IPR results in a finding
`
`of invalidity, as no matter the outcome, the patent infringement cause of action will survive the
`
`IPR because one claim wasnot instituted. (/d. at 4—5.)
`
`This factor weighs against granting a stay. The fact that one claim in the °500 Patent was
`
`not instituted meansthat no matter the outcome of the IPR, the °500 Patent will remain in this case,
`
`andthis will remain on this Court’s active docket. Accordingly, the parties will be forced to litigate
`
`the same issues and put forward the same evidence regardless of the outcome of the IPR. While
`
`the IPR may eliminate someof the claims, it will not eliminate the patent infringement cause of
`
`action. As such, the Court finds that a stay will not adequately simplify the issues in this case to
`
`warrant a stay.
`
`IV.
`
`CONCLUSION
`
`After weighingall the factors that bear on whether a staying pending IPRis warranted, the
`
`Court finds that the balance of those factors weighs against grating a stay. Accordingly, in the
`
`exercise of its discretion, the Court DENIES Infinera’s Re-Urged Motion to Stay Pending Jnter
`
`Partes Review of U.S. Patent No. 6,665,500 (Dkt. No. 118).
`
`So ORDEREDand SIGNEDthis 17th dayof July, 2020.
`
`
`
`UNITED STATES
`
`DISTRICT JUDGE
`
`NetNutLtd. v. Bright Data Ltd.
`IPR2021-01492, EX. 2009
`Page 6 of 6
`
`
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