`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`CALIFORNIA INSTITUTE OF
`TECHNOLOGY,
`
`
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`
`
`
`
`CIVIL ACTION NO. 2:21-CV-00446-JRG
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`ORDER
`
`
`
`
`
`
`
`
`Before the Court is the Motion to Stay Pending Inter Partes Review of the Asserted Patents
`
`(the “Motion) filed by Defendants Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc. (collectively, “Samsung”). (Dkt. No. 83.) In the Motion, Samsung moves to stay
`
`this case pending inter partes review of all asserted claims of the patent-in-suit. (Id. at 1.)
`
`I. BACKGROUND
`
`Plaintiff California Institute of Technology (“Caltech”) filed this case on December 3, 2021
`
`asserting infringement of five patents: U.S. Patent No. 7,116,710 (the “’710 patent”), U.S. Patent
`
`No. 7,421,032 (the “’032 patent”), U.S. Patent No. 7,716,552 (the “’552 patent”), U.S. Patent No.
`
`7,916,781 (the “’781 patent”), and U.S. Patent No. 8,284,833 (the “’833 patent”). (Dkt. No. 1).
`
`Caltech’s Second Amended Complaint (“SAC”), filed on October 26, 2022, narrowed the case and
`
`asserted infringement of only the ’710 patent, ’032 patent, ’781 patent, and ’833 patent
`
`(collectively, the “Asserted Patents”). (Dkt. No. 75.)1
`
`
`1 The SAC is the operative complaint in this action. (See, e.g., Dkt. No. 83 at 2.)
`
`CALTECH EXHIBIT - 2002
`Samsung v. Caltech - IPR2023-00131
`
`
`
`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 2 of 6 PageID #: 3563
`
`Between October 31, 2022 and November 1, 2022, Samsung filed petitions for inter partes
`
`review (“IPR”) covering all asserted claims of the Asserted Patents. (Dkt. No. 83 at 2.) The Patent
`
`Trial and Appeal Board (“PTAB”) provided Notices of Filing Date for each of the filed IPRs on
`
`November 10, 2022. (Id. at 3.) Caltech’s Preliminary Responses are due on February 10, 2023, the
`
`PTAB’s Institution Decisions are due on May 10, 2023, and, if instituted, the PTAB must make a
`
`final determination in each IPR by November 10, 2023. (Id.)
`
`Claim construction began in this case on October 11, 2022 with the parties’ exchange of
`
`proposed terms for construction. (Dkt. No. 94 at 5.) The Markman hearing is scheduled for
`
`February 28, 2023. (Id. at 4.) The deadline to substantially complete document production is on
`
`January 17, 2023 and expert reports are due to be exchanged beginning on April 24, 2023. (Id.)
`
`Trial is scheduled for September 11, 2023. (Id. at 1.)
`
`II. LEGAL STANDARD
`
`The district court has the inherent power to control its own docket, including the power to
`
`stay proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997). How to best manage the court’s
`
`docket “calls for the exercise of judgment, which must weigh competing interests and maintain an
`
`even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936).
`
`“District courts typically 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 case before the court.” NFC Techs. LLC v. HTC Am., Inc., 2015
`
`WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015). “Based on th[ese] factors, courts determine whether
`
`the benefits of a stay outweigh the inherent costs of postponing resolution of the litigation.” Id.
`
`
`
`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 3 of 6 PageID #: 3564
`
`III. DISCUSSION
`
`After reviewing the arguments of the parties as presented in the briefing, the Court finds
`
`that stay is not appropriate for the reasons described herein.
`
`A. A Stay Will Unduly Prejudice Caltech
`
`As this Court has recognized, a plaintiff has a right to timely enforcement of its patent
`
`rights. Trover Grp. Inc. v. Dedicated Micros USA, 2015 WL 1069179, at *2 (E.D. Tex. Mar. 11,
`
`2015). Caltech would be prejudiced by a delay in its ability to vindicate its patent rights caused by
`
`a stay, which weighs against granting this Motion.
`
`Samsung contends that Caltech will not be prejudiced from a stay because “Caltech could
`
`have initiated this litigation against Samsung years ago” and therefore will not be “prejudiced by
`
`an additional brief delay in litigating its infringement claims while the IPR petitions are pending.”
`
`(Dkt. No. 83 at 7–8.) According to Samsung, Caltech sued Broadcom and Apple for infringement
`
`of the Asserted Patents as early as 2016, and Caltech now “accuses many of the same Broadcom
`
`chips in this litigation…five-and-a-half years [later].” (Id. at 7.)
`
`Caltech contends that just because it could have filed suit earlier “does nothing to change
`
`the fact that it is now entitled to timely enforcement of its patent rights.” (Dkt. No. 88 at 12.)
`
`Caltech further argues that since the Asserted Patents have expired—and as Samsung’s Accused
`
`Products age—the “risk of stale memories and lost evidence weighs in favor of denying” the stay.
`
`(Dkt. No. 88 at 11.)
`
`Samsung additionally argues that Caltech will not suffer any undue prejudice from a stay
`
`because it does not make any products and does not compete with Samsung, and thus can be
`
`compensated with monetary relief for any damages or prejudice. (Dkt. No. 83 at 8.) Caltech argues
`
`that its “status as a non-practicing entity has no bearing on whether it will be prejudiced by a stay
`
`because every patentee has equal rights under the law to enforce his patent rights.” (Dkt. No. 88 at
`
`
`
`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 4 of 6 PageID #: 3565
`
`12–13 (citing Parallel Networks, LLC v. Netflix, Inc., 2008 WL 8793607, at *2 (E.D. Tex. Dec.
`
`23, 2008)).) Indeed, “the mere fact that [a plaintiff] is not currently practicing the patents does not
`
`mean that, as a matter of law, it is not prejudiced by a substantial delay of an imminent trial date.”
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. Ltd., 2015 WL 627887, at *2 (E.D. Tex.
`
`Jan. 29, 2015).
`
`Samsung further contends that it will be unduly prejudiced by a stay because it will have
`
`to incur the burden of continuing to defend against the allegations of infringement of the Asserted
`
`Patents. (Dkt. No. 83 at 9.) Samsung’s argument is inapposite, as the present factor in the stay
`
`analysis looks to “whether a stay will unduly prejudice or present a clear tactical disadvantage to
`
`the nonmoving party.” Tessera Advanced Techs., Inc. v. Samsung Electronics Co. Ltd., 2018 WL
`
`3472700, at *1 (E.D. Tex. July 19, 2018) (emphasis added). Further, despite Samsung’s assertions,
`
`both parties have already expended significant time and resources during discovery, claim
`
`construction, and motion practice over the nearly thirteen months this case has been pending. Any
`
`further delay would require the parties to sink additional resources into the case, all the while
`
`postponing Caltech’s vindication of its patent rights. NFC Tech. LLC v. HTC Am., Inc., No. 2:13-
`
`cv-1058, 2015 WL 10691111, at *2 (E.D. Tex. Mar. 11, 2015).
`
`Samsung requests a stay “pending final resolution of the IPRs.” (Dkt. No. 83 at 2.) Granting
`
`the stay requested by Samsung would thus require the parties to incur the substantial expenses of
`
`conducting the inter partes review at the PTAB until any final determination is made. The IPR
`
`proceedings at the PTAB are currently in their infancy (having been requested almost a year after
`
`the filing of the present action), and therefore granting a stay would require both Samsung and
`
`Caltech to conduct the entire inter partes review proceeding from its initial stages. By contrast,
`
`the present case is approximately eight months from jury selection, and the parties have behind
`
`
`
`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 5 of 6 PageID #: 3566
`
`them a large portion of the expense related to discovery and claim construction. Accordingly, this
`
`factor weighs against staying these proceedings.
`
`B. The Stage of This Litigation Disfavors a Stay
`
`The stage of the case also disfavors a stay. This case has been pending for over a year and
`
`is set for jury selection on September 11, 2023, approximately eight months away and
`
`approximately two months before final written decisions would issue (should the PTAB choose to
`
`institute the IPRs). (Dkt. No. 94 at 1.) The Markman hearing is set for February 28, 2023. (Id. at
`
`4.) Samsung waited ten months after this case was initiated to file its IPRs and to seek a stay from
`
`the Court. In that time, the parties engaged in extensive discovery, including the exchange of “tens
`
`of thousands of documents,” interrogatories, depositions, source code inspection, third-party
`
`discovery, and infringement and invalidity contentions. (Dkt. No. 88 at 3.) As of this Order, the
`
`parties are engaged in the claim construction process and are nearing completion of document
`
`production. (Dkt. No. 94 at 4.) Thus, at this stage, a stay would do nothing more than draw out the
`
`time to trial.
`
`C. A Stay is Unlikely to Simplify the Issues in this Case
`
`The Court finds that a stay pending IPR would do little to simplify the issues in this case
`
`at this juncture. Samsung argues that a stay will simplify or eliminate issues in this litigation
`
`because the outcome of the IPRs has the potential to address every asserted claim in all Asserted
`
`Patents. (Dkt. No. 83 at 1–2; 4–7.) However, it is the Court’s established policy that motions to
`
`stay pending IPR proceedings that have not yet been instituted are inherently premature. At this
`
`stage—before the PTAB has made any decision as to institution of the Petitions—it is impossible
`
`for the Court to determine “whether the stay will likely result in simplifying the case before the
`
`court” without engaging in speculation. NFC Tech., 2015 WL 10691111, at *2.
`
`
`
`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 6 of 6 PageID #: 3567
`
`Samsung cites to generic statistics that “the PTAB instituted 66% of trial petitions” in 2022
`
`to conclude that it is likely that the PTAB will likewise institute Samsung’s IPRs. (Dkt. No. 83 at
`
`5.) The Court is not persuaded by such speculation. Indeed, Samsung’s Motion ignores that “[p]rior
`
`to Samsung’s petitions, 16 petitions for IPR have been filed on the Asserted Patents,” of which,
`
`“only eight resulted in institution by the PTAB.” (Dkt. No. 88 at 9.) Further, “[o]f the 60 claims
`
`for which the PTAB granted institution, only five were ultimately found invalid[.]” (Id.) In fact,
`
`“[a]ll of the claims for which Samsung is seeking IPR have already been before the PTAB, and it
`
`has either declined to institute IPR or found that the petitioner failed to show that the claims are
`
`invalid.” (Id.) (emphasis in original). Given the substantial history of the Asserted Patents before
`
`the PTAB, the Court is not inclined to grant a stay based on pure conjecture that the PTAB will
`
`suddenly change its course of action this time around. Accordingly, this factor weighs against a
`
`stay.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Samsung’s Motion to Stay Pending Inter Partes Review of the
`
`Asserted Patents (Dkt. No. 83) is DENIED.
`
`
`
`
`
`
`
`.
`
`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 20th day of January, 2023.
`
`