Case 2:16-cv-00505-JRG Document 306 Filed 10/25/17 Page 1 of 3 PageID #: 13059
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`IMAGE PROCESSING TECHNOLOGIES,
`LLC
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`v.
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` Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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` Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ORDER
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`CASE NO. 2:16-CV-505-JRG
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`The Court held a hearing on October 17, 2017, regarding certain outstanding Motions
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`before the Court. At the hearing, the Court ruled on the record, and announced from the bench that
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`this written Order would follow, on the following two Motions: (1) Samsung Electronics Co.,
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`LTD’s and Samsung Electronics America, Inc.’s (collectively, “Samsung”) Renewed Motion to
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`Sever and Stay Pending Inter Partes Review (Dkt. No. 159); and (2) Samsung’s Motion to Stay
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`Pending Determination of Inter Partes Review (Dkt. No. 285). As announced at the hearing, and
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`having considered the briefing, argument of counsel, and the relevant authorities, the Court is of
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`the opinion that this case should be stayed pending completion of Inter Partes Review (“IPR”) and
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`to that extent such Motions should be and hereby are GRANTED.
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`Currently, Plaintiff Image Processing Technologies, LLC (“IPT”) asserts three patents:
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`U.S. Patent No. 8,983,134 (“the ’134 Patent”), U.S. Patent No. 6,959,293 (“the ’293 Patent”), and
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`U.S. Patent No. 6,717,518 (“the ’518 Patent”). Of the claims in these patents, only four remain
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`asserted in this case. The PTAB has instituted IPR on both asserted claims of the ’134 Patent and
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`the only asserted claim of the ’518 Patent. (See Dkt. Nos. 153-2 and 285). Only one asserted
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`Petitioner LG Ex-1012, 0001
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`Case 2:16-cv-00505-JRG Document 306 Filed 10/25/17 Page 2 of 3 PageID #: 13060
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`claim—Claim 1 of the ’293 Patent—is left before this Court without any pending IPR proceeding.1
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`On December 23, 2016, Samsung filed a Motion to Stay Pending Determination of Inter
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`Partes Review of the Patents-in-Suit (Dkt. No. 67), which the Court denied as premature because
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`the PTAB had not yet decided whether or not to review. (Dkt. No. 91.) On June 6, 2017, following
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`the PTAB’s institution of proceedings on some of the claims of the patents-in-suit, including
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`Claims 1 and 2 of the ’134 Patent, Samsung filed a Renewed Motion to Sever and Stay Pending
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`Inter Partes Review. (Dkt. No. 159.) Samsung also filed a separate Motion to Stay Pending Inter
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`Partes Review (Dkt. No. 285) on October 5, 2017 following the PTAB’s institution of proceedings
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`on Claim 39 of the ’518 Patent.
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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). “District courts typically consider
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`three factors when determining whether to grant a stay pending inter partes review of a patent in
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`suit: (1) whether the stay will unduly prejudice the nonmoving party, (2) whether the proceedings
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`before the court have reached an advanced stage . . . and (3) whether the stay will likely result in
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`simplifying the case before the court.” NFC Techs. LLC v. HTC Am., Inc., Case No. 2:13-cv-1058-
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`WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.).
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`Having considered the factors outlined above, the Court is persuaded that the benefits of a
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`stay outweigh the costs of delaying trial in this particular case. In this case, a stay has the potential
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`to decrease the burdens on the Court and the parties. Potential costs, delay, or prejudice resulting
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`from postponing the resolution of the case are outweighed by the benefits of a stay in this case.
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`Since only one asserted claim is not currently under a simultaneous IPR review, there is a material
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`possibility that the outcome of all IPR proceedings will streamline the scope and resolution of this
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`1 This Court previously found that Claim 29 of the ’293 Patent was directed to patent-ineligible subject matter. (Dkt.
`No. 305.)
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`2
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`Petitioner LG Ex-1012, 0002
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`Case 2:16-cv-00505-JRG Document 306 Filed 10/25/17 Page 3 of 3 PageID #: 13061
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`case. While motions to stay are highly individualized matters and parties predict ongoing patterns
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`from the Court at their peril, the Court finds that a stay is warranted under the particular facts and
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`circumstances presented here.
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`Accordingly, both Samsung’s Renewed Motion to Sever and Stay Pending Inter Partes
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`Review (Dkt. No. 159) and Samsung’s Motion to Stay Pending Determination of Inter Partes
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`Review (Dkt. No. 285) are GRANTED as regards to a stay. As to any requested severance, such
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`Motions are DENIED. It is therefore ORDERED that this case is STAYED until further Order
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`of this Court.
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`The Parties are further ORDERED to file a joint status report with the Court to inform the
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`Court regarding the results of the pending IPR proceedings. Such report shall be filed within
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`fourteen (14) days of the last decision from the PTAB with respect to the Asserted Claims and
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`Patents. A courtesy copy of such joint status report shall be delivered to chambers within the above
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`time period. Such report shall be joined in by lead counsel (and local counsel to the extent local
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`counsel have appeared herein) for each party.
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`All pending motions not previously disposed of by the Court in this case, including motions
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`pending in the above listed member cases, are hereby DENIED WITHOUT PREJUDICE. At
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`such further date as the stay is lifted by the Court, and within fourteen (14) days thereafter, the
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`parties may re-urge any motion denied without prejudice herein.
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`3
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`Petitioner LG Ex-1012, 0003
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