`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`
`v.
`
`Defendants.
`
`
`PLAINTIFF IMAGE PROCESSING TECHNOLOGIES, LLC’S SUR-REPLY IN
`OPPOSITION TO SAMSUNG’S MOTION TO STAY
`PENDING DETERMINATION OF INTER PARTES REVIEW
`
`
`Case 2:16-cv-00505-JRG Document 296 Filed 10/13/17 Page 1 of 5 PageID #: 12900
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`IMAGE PROCESSING TECHNOLOGIES,
`LLC,
`
`
`Plaintiff,
`
`
`
`Case No. 2:16-CV-0505-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner LG Ex-1015, 0001
`
`

`

`Case 2:16-cv-00505-JRG Document 296 Filed 10/13/17 Page 2 of 5 PageID #: 12901
`
`
`Samsung’s claims that a stay will result in simplification of this case are purely
`
`speculative. Final decisions in the ’134 patent and ’518 patent IPRs are not due until June and
`
`October 2018, respectively. Regardless of the outcome of those IPRs, the case on the asserted
`
`claims of the ’293 patent will be tried because those claims have already cleared PTAB review
`
`and will be unaffected by the present IPRs.1 Given the overlap in accused products and features,
`
`a trial at this time on all three patents will be substantially similar to a trial later on, either on the
`
`asserted claims of the ’293 patent only, or on the asserted claims of the ’293 patent and asserted
`
`claims of the ’134 and ’518 patents that are affirmed as patentable by the PTAB. Infringement
`
`of the accused products and features under the ’293 patent, which significantly overlap with the
`
`accused products and features under the ’134 and ’518 patents, will still need to be litigated and
`
`any alleged simplification that may or may not result from a stay is minimal at best.
`
`Samsung tries to downplay the significance of the ’293 patent by stating that there is
`
`“only one” product accused of infringing only the ’293 patent. D.I. 293 at 1. However, in the
`
`very next sentence it proves Image Processing’s point regarding the significant overlap in this
`
`case by stating, “all of the accused products (except this one) are also accused of infringing the
`
`’134 Patent and/or the ’518 Patent.” Id. Indeed, there are no features or products for which the
`
`’518 patent is the only asserted patent. D.I. 291, Exhibits 5–7.
`
`This case is trial-ready. Samsung’s arguments suggesting that its diligence in filing for a
`
`stay weighs against the advanced stage of the case, and its allegations that Image Processing
`
`
`1 Samsung’s argument that there is overlap between unasserted claim 22 of the ’293 patent (for
`which an IPR has been instituted) and asserted claims 1 and 29 of the ’293 patent that could
`result in simplification is unsupported. See D.I. 293 at 1. Important limitations of claims 1 and
`29 of the ’293 patent include two histograms for one parameter and the automatically updating of
`classification criteria. D.I. 291-9 at 26:33-26:59, 31:11-32:12. Claim 22 has neither of these
`limitations. D.I. 291-9 at 29:61-30:17. Thus, there is no likelihood that the IPR on unasserted
`claim 22 of the ’293 patent will have any effect on this case.
`
`1
`
`Petitioner LG Ex-1015, 0002
`
`

`

`Case 2:16-cv-00505-JRG Document 296 Filed 10/13/17 Page 3 of 5 PageID #: 12902
`
`
`“was late” in asserting the ’518 patent in this case (Image Processing amended its complaint to
`
`assert the ’518 patent after Samsung’s production of additional source code, D.I. 180 at 2) cannot
`
`counter the fact that jury selection will begin in one month. See D.I. 180 at 6; D.I. 291 at 3-5.
`
`Samsung has known about the ’518 patent since at least June 4, 2013, when it was notified of the
`
`’518 patent by Image Processing (D.I. 1-6 at 1) and did not need to wait to file an IPR on the
`
`’518 patent. Image Processing negotiated for years with Samsung regarding a potential license
`
`to the asserted patents, including the ’518 patent (D. I. 180-1 at ¶ 8), and Samsung has been well
`
`aware of its infringement. Furthermore, Image Processing has detailed the prejudice it will
`
`suffer from a stay. See D.I. 291 at 2-3; D.I. 180 at 4; D.I. 180-1.
`
`Given the significant resources that have been expended on this case by the parties and
`
`the Court, the trial-ready stage of this case, and that a stay would not substantially reduce the
`
`amount of work or simplify this case, there is no reason that would justify delaying resolution of
`
`this case to a later date.
`
`
`
`Dated:
`
`October 13, 2017
`
`
`
`Respectfully submitted,
`
`
`/s/ Michael N Zachary
`S. Calvin Capshaw
`State Bar No. 03783900
`ccapshaw@capshawlaw.com
`Elizabeth L. DeRieux
`State Bar No. 05770585
`ederieux@capshawlaw.com
`D. Jeffrey Rambin
`State Bar No. 00791478
`jrambin@capshawlaw.com
`CAPSHAW DERIEUX, LLP
`114 E. Commerce Ave.
`Gladewater, TX 75647
`Telephone: 903.845.5770
`
`
`2
`
`Petitioner LG Ex-1015, 0003
`
`

`

`Case 2:16-cv-00505-JRG Document 296 Filed 10/13/17 Page 4 of 5 PageID #: 12903
`
`
`Michael N. Zachary
`ANDREWS KURTH KENYON LLP
`1801 Page Mill Road, Suite 210
`Palo Alto, CA 94304
`Telephone: 1.650.384.4700
`Facsimile: 1.650.384.4701
`
`George E. Badenoch
`Mark A. Chapman
`Rose Cordero Prey
`Christopher J. Coulson
`Ksenia Takhistova
`Kulsoom Hasan
`Ian A. Moore
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004
`Telephone: 1.212.425.7200
`Facsimile: 1.212.425.5288
`
`Attorneys for Plaintiff
`Image Processing Technologies, LLC
`
`
`
`
`
`
`3
`
`Petitioner LG Ex-1015, 0004
`
`

`

`Case 2:16-cv-00505-JRG Document 296 Filed 10/13/17 Page 5 of 5 PageID #: 12904
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 13, 2017, a true and correct copy of this document was
`
`served on all counsel of record who are deemed to have consented to electronic service via the
`
`Court’s CM/ECF system.
`
`/s/ Michael N. Zachary
`
`
`
`
`
`4
`
`Petitioner LG Ex-1015, 0005
`
`