Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 1 of 6 PageID #: 3562
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CALIFORNIA INSTITUTE OF
`TECHNOLOGY,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Plaintiff,
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`Defendants.
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`CIVIL ACTION NO. 2:21-CV-00446-JRG
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`§
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`§
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`ORDER
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`Before the Court is the Motion to Stay Pending Inter Partes Review of the Asserted Patents
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`(the “Motion) filed by Defendants Samsung Electronics Co., Ltd. and Samsung Electronics
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`America, Inc. (collectively, “Samsung”). (Dkt. No. 83.) In the Motion, Samsung moves to stay
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`this case pending inter partes review of all asserted claims of the patent-in-suit. (Id. at 1.)
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`I. BACKGROUND
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`Plaintiff California Institute of Technology (“Caltech”) filed this case on December 3, 2021
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`asserting infringement of five patents: U.S. Patent No. 7,116,710 (the “’710 patent”), U.S. Patent
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`No. 7,421,032 (the “’032 patent”), U.S. Patent No. 7,716,552 (the “’552 patent”), U.S. Patent No.
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`7,916,781 (the “’781 patent”), and U.S. Patent No. 8,284,833 (the “’833 patent”). (Dkt. No. 1).
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`Caltech’s Second Amended Complaint (“SAC”), filed on October 26, 2022, narrowed the case and
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`asserted infringement of only the ’710 patent, ’032 patent, ’781 patent, and ’833 patent
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`(collectively, the “Asserted Patents”). (Dkt. No. 75.)1
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`1 The SAC is the operative complaint in this action. (See, e.g., Dkt. No. 83 at 2.)
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`CALTECH EXHIBIT - 2002
`Samsung v. Caltech - IPR2023-00131
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`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 2 of 6 PageID #: 3563
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`Between October 31, 2022 and November 1, 2022, Samsung filed petitions for inter partes
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`review (“IPR”) covering all asserted claims of the Asserted Patents. (Dkt. No. 83 at 2.) The Patent
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`Trial and Appeal Board (“PTAB”) provided Notices of Filing Date for each of the filed IPRs on
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`November 10, 2022. (Id. at 3.) Caltech’s Preliminary Responses are due on February 10, 2023, the
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`PTAB’s Institution Decisions are due on May 10, 2023, and, if instituted, the PTAB must make a
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`final determination in each IPR by November 10, 2023. (Id.)
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`Claim construction began in this case on October 11, 2022 with the parties’ exchange of
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`proposed terms for construction. (Dkt. No. 94 at 5.) The Markman hearing is scheduled for
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`February 28, 2023. (Id. at 4.) The deadline to substantially complete document production is on
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`January 17, 2023 and expert reports are due to be exchanged beginning on April 24, 2023. (Id.)
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`Trial is scheduled for September 11, 2023. (Id. at 1.)
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`II. LEGAL STANDARD
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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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`“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., 2015
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`WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015). “Based on th[ese] factors, courts determine whether
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`the benefits of a stay outweigh the inherent costs of postponing resolution of the litigation.” Id.
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`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 3 of 6 PageID #: 3564
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`III. DISCUSSION
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`After reviewing the arguments of the parties as presented in the briefing, the Court finds
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`that stay is not appropriate for the reasons described herein.
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`A. A Stay Will Unduly Prejudice Caltech
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`As this Court has recognized, a plaintiff has a right to timely enforcement of its patent
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`rights. Trover Grp. Inc. v. Dedicated Micros USA, 2015 WL 1069179, at *2 (E.D. Tex. Mar. 11,
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`2015). Caltech would be prejudiced by a delay in its ability to vindicate its patent rights caused by
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`a stay, which weighs against granting this Motion.
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`Samsung contends that Caltech will not be prejudiced from a stay because “Caltech could
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`have initiated this litigation against Samsung years ago” and therefore will not be “prejudiced by
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`an additional brief delay in litigating its infringement claims while the IPR petitions are pending.”
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`(Dkt. No. 83 at 7–8.) According to Samsung, Caltech sued Broadcom and Apple for infringement
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`of the Asserted Patents as early as 2016, and Caltech now “accuses many of the same Broadcom
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`chips in this litigation…five-and-a-half years [later].” (Id. at 7.)
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`Caltech contends that just because it could have filed suit earlier “does nothing to change
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`the fact that it is now entitled to timely enforcement of its patent rights.” (Dkt. No. 88 at 12.)
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`Caltech further argues that since the Asserted Patents have expired—and as Samsung’s Accused
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`Products age—the “risk of stale memories and lost evidence weighs in favor of denying” the stay.
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`(Dkt. No. 88 at 11.)
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`Samsung additionally argues that Caltech will not suffer any undue prejudice from a stay
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`because it does not make any products and does not compete with Samsung, and thus can be
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`compensated with monetary relief for any damages or prejudice. (Dkt. No. 83 at 8.) Caltech argues
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`that its “status as a non-practicing entity has no bearing on whether it will be prejudiced by a stay
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`because every patentee has equal rights under the law to enforce his patent rights.” (Dkt. No. 88 at
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`12–13 (citing Parallel Networks, LLC v. Netflix, Inc., 2008 WL 8793607, at *2 (E.D. Tex. Dec.
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`23, 2008)).) Indeed, “the mere fact that [a plaintiff] is not currently practicing the patents does not
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`mean that, as a matter of law, it is not prejudiced by a substantial delay of an imminent trial date.”
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`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. Ltd., 2015 WL 627887, at *2 (E.D. Tex.
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`Jan. 29, 2015).
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`Samsung further contends that it will be unduly prejudiced by a stay because it will have
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`to incur the burden of continuing to defend against the allegations of infringement of the Asserted
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`Patents. (Dkt. No. 83 at 9.) Samsung’s argument is inapposite, as the present factor in the stay
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`analysis looks to “whether a stay will unduly prejudice or present a clear tactical disadvantage to
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`the nonmoving party.” Tessera Advanced Techs., Inc. v. Samsung Electronics Co. Ltd., 2018 WL
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`3472700, at *1 (E.D. Tex. July 19, 2018) (emphasis added). Further, despite Samsung’s assertions,
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`both parties have already expended significant time and resources during discovery, claim
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`construction, and motion practice over the nearly thirteen months this case has been pending. Any
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`further delay would require the parties to sink additional resources into the case, all the while
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`postponing Caltech’s vindication of its patent rights. NFC Tech. LLC v. HTC Am., Inc., No. 2:13-
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`cv-1058, 2015 WL 10691111, at *2 (E.D. Tex. Mar. 11, 2015).
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`Samsung requests a stay “pending final resolution of the IPRs.” (Dkt. No. 83 at 2.) Granting
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`the stay requested by Samsung would thus require the parties to incur the substantial expenses of
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`conducting the inter partes review at the PTAB until any final determination is made. The IPR
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`proceedings at the PTAB are currently in their infancy (having been requested almost a year after
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`the filing of the present action), and therefore granting a stay would require both Samsung and
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`Caltech to conduct the entire inter partes review proceeding from its initial stages. By contrast,
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`the present case is approximately eight months from jury selection, and the parties have behind
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`them a large portion of the expense related to discovery and claim construction. Accordingly, this
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`factor weighs against staying these proceedings.
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`B. The Stage of This Litigation Disfavors a Stay
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`The stage of the case also disfavors a stay. This case has been pending for over a year and
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`is set for jury selection on September 11, 2023, approximately eight months away and
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`approximately two months before final written decisions would issue (should the PTAB choose to
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`institute the IPRs). (Dkt. No. 94 at 1.) The Markman hearing is set for February 28, 2023. (Id. at
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`4.) Samsung waited ten months after this case was initiated to file its IPRs and to seek a stay from
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`the Court. In that time, the parties engaged in extensive discovery, including the exchange of “tens
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`of thousands of documents,” interrogatories, depositions, source code inspection, third-party
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`discovery, and infringement and invalidity contentions. (Dkt. No. 88 at 3.) As of this Order, the
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`parties are engaged in the claim construction process and are nearing completion of document
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`production. (Dkt. No. 94 at 4.) Thus, at this stage, a stay would do nothing more than draw out the
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`time to trial.
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`C. A Stay is Unlikely to Simplify the Issues in this Case
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`The Court finds that a stay pending IPR would do little to simplify the issues in this case
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`at this juncture. Samsung argues that a stay will simplify or eliminate issues in this litigation
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`because the outcome of the IPRs has the potential to address every asserted claim in all Asserted
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`Patents. (Dkt. No. 83 at 1–2; 4–7.) However, it is the Court’s established policy that motions to
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`stay pending IPR proceedings that have not yet been instituted are inherently premature. At this
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`stage—before the PTAB has made any decision as to institution of the Petitions—it is impossible
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`for the Court to determine “whether the stay will likely result in simplifying the case before the
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`court” without engaging in speculation. NFC Tech., 2015 WL 10691111, at *2.
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`Case 2:21-cv-00446-JRG Document 108 Filed 01/20/23 Page 6 of 6 PageID #: 3567
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`Samsung cites to generic statistics that “the PTAB instituted 66% of trial petitions” in 2022
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`to conclude that it is likely that the PTAB will likewise institute Samsung’s IPRs. (Dkt. No. 83 at
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`5.) The Court is not persuaded by such speculation. Indeed, Samsung’s Motion ignores that “[p]rior
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`to Samsung’s petitions, 16 petitions for IPR have been filed on the Asserted Patents,” of which,
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`“only eight resulted in institution by the PTAB.” (Dkt. No. 88 at 9.) Further, “[o]f the 60 claims
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`for which the PTAB granted institution, only five were ultimately found invalid[.]” (Id.) In fact,
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`“[a]ll of the claims for which Samsung is seeking IPR have already been before the PTAB, and it
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`has either declined to institute IPR or found that the petitioner failed to show that the claims are
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`invalid.” (Id.) (emphasis in original). Given the substantial history of the Asserted Patents before
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`the PTAB, the Court is not inclined to grant a stay based on pure conjecture that the PTAB will
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`suddenly change its course of action this time around. Accordingly, this factor weighs against a
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`stay.
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`IV. CONCLUSION
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`For the foregoing reasons, Samsung’s Motion to Stay Pending Inter Partes Review of the
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`Asserted Patents (Dkt. No. 83) is DENIED.
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 20th day of January, 2023.
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