Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 1 of 18 PageID #: 601
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ORCKIT CORPORATION,
`
`Plaintiff,
`
`Civil Action No. 2:22-cv-276
`
`v.
`
`JURY TRIAL DEMANDED
`
`CISCO SYSTEMS, INC.,
`
`Defendant.
`
`DEFENDANT’S MOTION FOR A STAY PENDING
`INTER PARTES REVIEW PROCEEDINGS ON ALL FOUR ASSERTED PATENTS
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 1 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 2 of 18 PageID #: 602
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................. 2
`
`A.
`
`B.
`
`The Present Litigation Is At An Early Stage .......................................................... 2
`
`Cisco’s Pending IPRs Challenge All Asserted Claims On Grounds Distinct From
`Those Considered By The Patent Examiners.......................................................... 3
`
`LEGAL STANDARD ......................................................................................................... 4
`
`ARGUMENT ...................................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`A Stay Will Not Prejudice Orckit. .......................................................................... 6
`
`The Early Stage Of The Case Weighs In Favor Of A Stay. ................................... 8
`
`A Stay Will Simplify This Case.............................................................................. 9
`
`At Minimum, The Court Should Deny This Motion Without Prejudice So That
`Cisco Can Renew The Motion After The IPR Institution Decisions. ................... 11
`
`V.
`
`CONCLUSION ................................................................................................................. 12
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 2 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 3 of 18 PageID #: 603
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Alcohol Monitoring Sys., Inc. v. ActSoft, Inc.,
`Nos. 07-cv-02261-PAB, 08-cv-01226, 2011 WL 5075619 (D. Colo. Oct. 25, 2011) ........ 7
`
`Anascape, Ltd. V. Microsoft Corp.,
`475 F. Supp. 2d 612 (E.D. Tex. 2007) .............................................................................. 10
`
`Arbor Glob. Strategies LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-00333-JRG-RSP, 2021 WL 66531 (E.D. Tex. Jan. 7, 2021) ....................... 11
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)......................................................................................... 10
`
`Clinton v. Jones,
`520 U.S. 681 (1997) ............................................................................................................ 4
`
`Customedia Techs., LLC v. DISH Network Corp.,
`No. 2:16-cv-129-JRG, 2017 WL 3836123 (E.D. Tex. Aug. 9, 2017) ................................ 4
`
`Cywee Grp. Ltd. v. Samsung Elecs. Co.,
`No. 2:17-cv-00140-WCB-RSP, 2019 WL 11023976 (E.D. Tex. February 14, 2019) 5, 7, 8
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`2019 WL 1276029 (D. Del. Mar. 20, 2019) ..................................................................... 10
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988)........................................................................................... 4
`
`e-Watch Inc. v. Apple, Inc.,
`No. 2:13-cv-1061-JRG-RSP, 2015 WL 12915668 (E.D. Tex. Mar. 25, 2015) ................ 11
`
`Finjan, Inc. v. Symantec Corp.,
`139 F. Supp. 3d 1032 (N.D. Cal. 2015) .............................................................................. 5
`
`In re Intel Corp.,
`No. 2021-168, 2021 WL 4427875 (Fed. Cir. 2021) ......................................................... 11
`
`Kove IO, Inc. v. Amazon Web Servs., Inc.,
`No. 18-cv-8175, 2022 WL 683666 (N.D. Ill. Mar. 8, 2022) .............................................. 7
`
`Meetrix IP, LLC v. Zoho Corp.,
`No. 1:22-cv-588-LY (E.D. Tex. February 28, 2023) ...................................................... 5, 7
`
`Microlinc, LLC v. Intel Corp.,
`No. 2:07-cv-488 TJW, 2010 WL 3766655 (E.D. Tex. Sept. 20, 2010) .............................. 6
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 3 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 4 of 18 PageID #: 604
`
`Murata Mach. USA v. Daifuku Co.,
`830 F.3d 1357 (Fed. Cir. 2016)........................................................................................... 5
`
`NFC Tech. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ..................... 5, 10
`
`Norman IP Holdings, LLC v. TP-Link Techs., Co.,
`No. 6:13-cv-384, 2014 WL 5035718 (E.D. Tex. Oct. 8, 2014) .......................................... 8
`
`Onpoint Sys., LLC v. Protect Animals With Satellites, LLC,
`No. 4:20-cv-657, 2022 WL 2704166 (E.D. Tex. July 12, 2022) ................................ 4, 5, 9
`
`Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc.,
`No. 2:19-cv-00225-JRG, 2021 WL 121154 (E.D. Tex. Jan. 13, 2021) ............................ 11
`
`Regents of the Univ. of Minnesota v. LSI Corp.,
`926 F.3d 1327 (Fed. Cir. 2019)........................................................................................... 4
`
`Spine Holdings, LLC v. Orthofix Medical, Inc.,
`No. 4:20-cv-77-SDJ (E.D. Tex. June 8, 2020) .................................................................... 5
`
`Uniloc 2017 LLC v. LG Elecs. U.S.A., Inc.,
`No. 3:18-cv-3071-N, 2020 WL 374545 (N.D. Tex. Jan 23, 2020) ..................................... 6
`
`Uniloc USA, Inc. v. Samsung Elecs. Am., Inc.,
`No. 2:16-cv-642, 2017 WL 9885168 (E.D. Tex. June 13, 2017) ....................................... 9
`
`Village Green Techs. LLC, v. Samsung Elecs. Co. Ltd.,
`No. 2:22-cv-00099-JRG, 2023 WL 416419 (E.D. Tex. Jan. 25, 2023) .......................... 6, 8
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)........................................................................................... 9
`
`Wi-LAN, Inc. v. LG Elecs., Inc.,
`No. 3:17-cv-00358, 2018 WL 2392161 (S.D. Cal. May 22, 2018) .................................... 5
`
`STATUTES
`
`35 U.S.C. § 315(e)(2) .................................................................................................................... 11
`
`H.R. Rep. 112-98, pt. I (2011) ........................................................................................................ 4
`
` OTHER AUTHORITIES
`
`
`
`
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 4 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 5 of 18 PageID #: 605
`
`I.
`
`INTRODUCTION
`
`The Court should stay this case because Defendant Cisco Systems, Inc. (“Cisco”) filed IPR
`
`petitions on every asserted claim in this case. Cisco’s filings come early in the case—before any
`
`depositions have taken place and more than a month before the parties exchange claim terms—
`
`and stand to create the ultimate issue simplification, entirely mooting the case. In such
`
`circumstances, each factor weighs in favor of staying the case.
`
`First, Orckit faces no undue prejudice because it is a non-practicing entity that does not
`
`compete with Cisco.
`
`Second, the case is at a very early stage. The claim construction process has not begun,
`
`the Markman hearing is six months away, fact discovery just started and does not close for seven
`
`months, opening expert reports are not due for seven months, Plaintiff has only produced thirty-
`
`nine documents to date, no disputed issues have been decided by this Court, and trial is nearly a
`
`year away. Additionally, Cisco’s motion timing is not strategic. The same day that Cisco filed its
`
`last IPR, it informed Orckit that Cisco planned on seeking a stay and requested a meet and confer
`
`at Orckit’s first availability. Cisco filed this motion the day after the parties met and conferred.
`
`Third, because Cisco’s IPRs cover all asserted claims, resolution of Cisco’s IPRs will
`
`significantly narrow, or entirely moot, this litigation. A stay would avoid the risk of proceeding
`
`with a likely unnecessary and burdensome litigation—including claim construction, fact
`
`discovery, expert discovery, summary judgment, pre-trial filings, and trial. And even if some of
`
`the challenged claims were to survive the IPRs, a stay will simplify validity issues in this case.
`
`Such simplifications are particularly important given the incredibly complex nature of this case;
`
`Orckit accused Cisco of infringing over 100 claims across four unrelated patents implicating
`
`hundreds of accused products and identified more than a dozen foreign witnesses in its disclosures.
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 5 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 6 of 18 PageID #: 606
`
`To the extent the Court believes that granting a stay would be premature before the Patent
`
`Office issues its IPR institution decisions, Cisco respectfully requests that the Court withhold
`
`ruling on Cisco’s motion until such institution decision or deny Cisco’s motion without prejudice,
`
`to refile after the Patent Office issues its institution decisions.
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`The Present Litigation Is At An Early Stage
`
`On July 22, 2022 Orckit filed its first complaint accusing Cisco of infringing the four
`
`Patents-in-suit, which together included over 130 claims.1 Orckit only asserted one “exemplary”
`
`claim per Patent-in-suit and did not identify any allegedly infringing features of any of the products
`
`it accused of infringing. Dkt. No. 1. Cisco responded by filing a Motion to Dismiss Plaintiff’s
`
`Complaint For Patent Infringement Pursuant to Fed. R. Civ. P. 12(b)(6). Dkt. No. 15. Orckit then
`
`filed an amended complaint on October 14, 2022, which for the first time identified some accused
`
`features of a few product lines, but still only identified one claim per Patent-in-suit. Dkt. No. 21.
`
`On November 3, 2022 Orckit served infringement contentions identifying for the first time
`
`the 104 claims it accuses Cisco of infringing. Cisco promptly objected to the adequacy of those
`
`infringement contentions and explained to Orckit that Orckit’s infringement contentions did not
`
`adequately provide notice of its infringement theories as required by this Court’s rules. After Cisco
`
`identified the deficiencies in Orckit’s contentions, the parties began meeting and conferring about
`
`amending those contentions without the need for judicial intervention through November and
`
`December of 2023. Orckit served finalized amended contentions, providing the first actual notice
`
`of its infringement theories, on January 19, 2023.
`
`1 Orckit has asserted U.S. Patent Nos. 6,680,904; 7,545,740; 8,830,821; and 10652,111
`(collectively, the “Patents-in-suit”). Cisco filed petitions for Inter Partes review on all asserted
`claims of all of the Patents-in-suit (collectively, the “Co-Pending IPRs”).
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 6 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 7 of 18 PageID #: 607
`
`Cisco filed its first two IPR petitions on January 9, 2023, only 6 weeks after Cisco first
`
`answered Orckit’s complaint (Dkt. No. 26) and before Orckit finalized its infringement
`
`contentions.
`
`On February 2, 2023, Cisco served its initial invalidity contentions.
`
`Cisco filed its third IPR petition six weeks after the first two, on February 21, 2023, and
`
`filed its last petition just three weeks later on March 14, 2023. In February and March 2023, the
`
`parties met and conferred regarding alleged deficiencies in Cisco’s invalidity contentions. To
`
`resolve the issue without judicial intervention, Cisco plans on filing an unopposed motion to amend
`
`its invalidity contentions at the end of this month.
`
`Fact discovery in the present matter is in its infancy. Since fact discovery opened, the
`
`parties have served, but not responded to, their first sets of interrogatories. Orckit has only
`
`produced 39 total documents so far.2 Neither party has taken any depositions yet. The parties will
`
`not exchange proposed claim terms for claim construction until May 4, 2023 and will not have a
`
`claim construction hearing until September 7, 2023. The deadline to complete fact discovery is
`
`seven months away on October 19, 2023. Expert discovery has not started. Dispositive motions
`
`are eight months away, set for November 27, 2023, and the trial is set for just under a year away
`
`on March 4, 2024.
`
`B.
`
`Cisco’s Pending IPRs Challenge All Asserted Claims On Grounds Distinct
`From Those Considered By The Patent Examiners
`
`By March 14, 2023—prior to the parties finalizing contentions, responding to any
`
`interrogatories, taking depositions, and well before the Claim Construction hearing—Cisco filed
`
`four IPRs, covering each Asserted Patent and all 104 asserted claims in the present litigation:
`
`2 Pursuant to P.R. 3-3 and 3-4, Cisco produced tens of thousands of technical documents regarding
`the accused products and prior art with its invalidity contentions, but Cisco’s burden is not relevant
`to the stay factors as the movant.
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 7 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 8 of 18 PageID #: 608
`
`IPR No.
`
`IPR2023-00401
`
`Asserted
`Patent
`7,545,740
`
`Filing Date
`
`January 9, 2023
`
`IPR2023-00402
`
`8,830,821
`
`January 9, 2023
`
`IPR2023-00554
`
`10,652,111 February 21, 2023
`
`IPR2023-00714
`
`6,680,904 March 14, 2023
`
`Claims
`Challenged
`1-31 (all claims)
`
`1-20 (all claims)
`1-9, 12-24, 27-
`31 (all asserted
`claims)
`1-26 (all claims)
`
`Exhibit
`
`Ex. 1
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`The IPRs Cisco filed rely on prior art that was not considered by the Patent Office during
`
`the original prosecution of the patent. Indeed, only one of the twelve prior art references that Cisco
`
`asserts in an IPR ground even appeared on the face of a challenged patent. Compare Exs. 1-4,
`
`with Patents-in-suit.
`
`III. LEGAL STANDARD
`
`The Court possesses the inherent power to control its own docket, including the power to
`
`stay proceedings. Customedia Techs., LLC v. DISH Network Corp., No. 2:16-cv-129-JRG, 2017
`
`WL 3836123, at *1 (E.D. Tex. Aug. 9, 2017) (citing Clinton v. Jones, 520 U.S. 681, 706 (1997));
`
`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988). A goal of an IPR is “to limit
`
`unnecessary and counterproductive litigation costs.” Regents of the Univ. of Minnesota v. LSI
`
`Corp., 926 F.3d 1327, 1335 (Fed. Cir. 2019) (citing H.R. Rep. 112-98, pt. I, at 40 (2011)). “A stay
`
`is particularly justified when the outcome of a PTO proceeding is likely to assist the court in
`
`determining patent validity or eliminate the need to try infringement issues.” Onpoint Sys., LLC
`
`v. Protect Animals With Satellites, LLC, No. 4:20-cv-657, 2022 WL 2704166, at *1 (E.D. Tex.
`
`July 12, 2022) (internal quotations omitted).
`
`When deciding whether to stay a case pending IPR, district courts will consider “(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
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 8 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 9 of 18 PageID #: 609
`
`has been set, and (3) whether the stay will likely result in simplifying the case before the court.”
`
`Onpoint, 2022 WL 2704166 at *2 (quoting NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-
`
`WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015)). “Based on those factors, courts
`
`determine whether the benefits of a stay outweigh the inherent costs of postponing resolution of
`
`the litigation.” Id. The Federal Circuit and courts in this District have also considered “whether a
`
`stay will reduce the burden of litigation on the parties and the court.” See, e.g., Murata Mach.
`
`USA v. Daifuku Co., 830 F.3d 1357, 1362 (Fed. Cir. 2016) (internal quotations omitted); Cywee
`
`Grp. Ltd. V. Samsung Elecs. Co., No. 2:17-cv-00140-WCB-RSP, 2019 WL 11023976, at *2 (E.D.
`
`Tex. February 14, 2019).
`
`District Courts, including in this District, have granted stays prior to institution decisions,
`
`particularly when the case is early enough to lead to considerable conservation of resources and
`
`when the IPRs will clarify and streamline the issues for the court. See, e.g., Meetrix IP, LLC v.
`
`Zoho Corp., No. 1:22-cv-588-LY, Dkt. No. 43 at 3 (E.D. Tex. February 28, 2023) (granting stay
`
`prior to institution because all three considered factors weighted in favor of a stay); Spine Holdings,
`
`LLC v. Orthofix Medical, Inc., No. 4:20-cv-77-SDJ, Dkt. No. 8 at 2 (E.D. Tex. June 8, 2020)
`
`(staying case pending IPR prior to even filing IPR petition when “neither party will be prejudiced
`
`and that the case is early enough in the litigation process that a stay is likely to result in considerable
`
`conservation of both judicial and party resources.”); Finjan, Inc. v. Symantec Corp., 139 F. Supp.
`
`3d 1032, 1037–38 (N.D. Cal. 2015) (granting stay “pending a decision by the PTO concerning
`
`whether to institute IPR” and noting “were the Court to deny the stay until a decision on institution
`
`is made, the parties and the Court would expend significant resources on issues that could
`
`eventually be mooted by the IPR decision”); Wi-LAN, Inc. v. LG Elecs., Inc., No. 3:17-cv-00358,
`
`2018 WL 2392161, at *2 (S.D. Cal. May 22, 2018) (granting a stay “pending the PTO’s decisions
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 9 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 10 of 18 PageID #: 610
`
`regarding institution of [Defendant’s] IPR petitions” and finding that a “stay would further
`
`promote the interest of justice and judicial economy”).
`
`IV.
`
`ARGUMENT
`
`The three stay factors—simplification of issues, stage of the proceedings, and potential
`
`undue prejudice to the non-moving party—favor granting a stay. First, Orckit is a non-practicing
`
`entity seeking monetary damages for alleged infringement by products that Cisco has sold for
`
`years. Second, the case is in its infancy; fact discovery has barely started and the vast majority of
`
`the work in the case lies in the future. Third, Cisco’s IPRs cover all 104 asserted claims of the
`
`four Patents-in-suit and stand to largely simplify, if not moot, this entire case.
`
`A.
`
`A Stay Will Not Prejudice Orckit.
`
`A stay pending Cisco’s IPRs will not unduly prejudice Orckit. Orckit and Cisco are not
`
`competitors. Indeed, Orckit was only formed in April 2022, and in its complaint Orckit did not
`
`provide a principal place of business nor allege that it sold any products. Dkt. No. 21. Orckit only
`
`stated that Orckit Communications Ltd.—an unrelated entity with a similar name—used to create
`
`telecommunications infrastructure systems before being liquidated. Id. at 4. Because Orckit does
`
`not manufacture or sell any products, Orckit cannot allege that it would be harmed by customer
`
`losses or by injury to market share during a stay. See Microlinc, LLC v. Intel Corp., No. 2:07-cv-
`
`488-TJW, 2010 WL 3766655, at *2 (E.D. Tex. Sept. 20, 2010). “Such a lack of competition
`
`weighs against a finding of undue prejudice.” Village Green Techs. LLC, v. Samsung Elecs. Co.
`
`Ltd., No. 2:22-cv-00099-JRG, 2023 WL 416419, at *2 (E.D. Tex. Jan. 25, 2023) (citing Uniloc
`
`2017 LLC v. LG Elecs. U.S.A., Inc., No. 3:18-cv-3071-N, 2020 WL 374545, at *1 (N.D. Tex. Jan
`
`23, 2020)).
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 10 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 11 of 18 PageID #: 611
`
`Mere delay, without more, is insufficient to establish undue prejudice. See Cywee, 2019
`
`WL 11023976, at *2 . The fact that a stay in this case would be no more than “mere delay” is
`
`emphasized by Orckit seeking damages and not preliminary injunctive relief. Dkt. 21 at 22, 30,
`
`38, 49, 50; Ex. 5 (Plaintiff’s Supplemental Contentions: Asserted Claims by Product Category (as
`
`amended on 1/19/2023)) at 82. Orckit will be able to collect damages for alleged infringement
`
`that occurred during the stay. Moreover, one of the accused patents is expired; damages are not
`
`even accruing on that patent. See Kove IO, Inc. v. Amazon Web Servs., Inc., No. 18-cv-175, 2022
`
`WL 683666, at *3 (N.D. Ill. Mar. 8, 2022) (finding where the asserted patents are expired, “any
`
`prejudice resulting from a delay will not be undue prejudice”). Additionally, the accused products
`
`span decades and many of those products are no longer sold by Cisco. Compare Ex. 5 with Ex. 6
`
`(Cisco
`
`list
`
`of
`
`End-of-Sale
`
`and
`
`End-of-Life
`
`Products)
`
`(https://web.archive.org/web/20230307092403/https://www.cisco.com/c/en/us/products/eos-eol-
`
`listing.html, Mar. 7, 2023); see Meetrix, No. 1:22-cv-588-LY, Dkt. No. 43 at 3 (“[Plaintiff] did not
`
`file suit against [Defendant] for years after the accused products at issue were first launched.
`
`Therefore, the court concludes that the first factor weighs in favor of a stay.”).
`
`Nor will a stay give the Cisco an unwarranted tactical advantage. To the contrary, a stay
`
`would prevent either party from taking inconsistent positions in the Patent Office and in this case
`
`because it will allow this Court to benefit from reviewing the full record of the parties’ claim
`
`construction arguments in the IPRs, and the Patent Office’s resolution of them, before addressing
`
`claim construction here. Thus a stay would prevent tactical advantages rather than create them.
`
`See, e.g., Alcohol Monitoring Sys., Inc. v. ActSoft, Inc., Nos. 07-cv-02261-PAB, No. 08-cv-01226,
`
`2011 WL 5075619, at *6 (D. Colo. Oct. 25, 2011) (“Allowing plaintiff to alter its position [from
`
`that asserted to the Patent Office] would give plaintiff the unfair advantage of retaining the . . .
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 11 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 12 of 18 PageID #: 612
`
`patent while pursuing an infringement claim based on a position inconsistent with the prior
`
`successful position.”).
`
`B.
`
`The Early Stage Of The Case Weighs In Favor Of A Stay.
`
`Cisco has diligently pursued its IPR petitions and then a stay in this case. See Village
`
`Green, 2023 WL 416419, at *3 (“The Court also considers whether the defendant acted with
`
`reasonable dispatch in filing its petitions for inter partes review and then, after the petitions were
`
`granted, in filing its motion for a stay.”) (internal quotations omitted). Cisco filed its first two IPR
`
`petitions before even receiving Orckit’s first amended infringement contentions, requested a meet
`
`and confer with Orckit regarding a stay on the same day as filing the last IPR on March 14, 2023,
`
`and promptly filed this motion after meeting and conferring with Orckit.
`
`Most of the work for the parties and the Court in this case remains ahead, which favors
`
`granting Cisco’s request for a stay. See, e.g., Norman IP Holdings, LLC v. TP-Link Techs., Co.,
`
`No. 6:13-cv-384, 2014 WL 5035718, at *3 (E.D. Tex. Oct. 8, 2014) (“Courts often find the stage
`
`of litigation weighs in favor of a stay if there remains a significant amount of work ahead for the
`
`parties and the court, even when the parties and/or the court have already devoted substantial
`
`resources to the litigation.”) (internal citations omitted). The claim construction process has yet
`
`to begin, and the claim construction hearing is just over six months away and will occur just within
`
`about a week of the first two institution decision deadlines for the Co-Pending IPRs. The case is
`
`also still in the early stages of fact discovery, with the close of fact discovery about seven months
`
`away. The parties have not deposed a single witness, expert discovery has not begun, summary
`
`judgment is eight months away, and trial is about a year away. At this point, “[t]he most
`
`burdensome parts of the case . . . all lie in the future.” Cywee, 2019 WL 11023976, at *6.
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 12 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 13 of 18 PageID #: 613
`
`With claim construction and the substantial discovery deadline well into the future, the
`
`case is at an ideal stage for a stay. See, e.g., VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d
`
`1307, 1317 (Fed. Cir. 2014) (determining that a stay pending administrative review is proper where
`
`“there remained eight months of fact discovery, the joint claim construction statements had yet to
`
`be filed, and jury selection was a year away”). A stay would be especially useful to conserve
`
`resources here, where the IPRs have the potential to obviate the need for the District Court case
`
`entirely.
`
`C.
`
`A Stay Will Simplify This Case.
`
`Granting a stay would simplify this case by potentially eliminating all issues in this
`
`litigation. “[T]he most important factor bearing on whether to grant a stay in this case is the
`
`prospect that the inter partes review proceeding will result in simplification of the issues before
`
`the Court.” Onpoint, 2022 WL 2704166, at *3. “A stay is particularly justified when the outcome
`
`of a PTO proceeding is likely to assist the court in determining patent validity or eliminate the
`
`need to try infringement issues.” Id. at *1 (internal quotations omitted). That purpose would be
`
`served here, as the pending IPR petitions address all 104 asserted claims in all four Patents-in-suit.
`
`If the Court stays this case and the PTAB later invalidates the asserted claims of the Asserted
`
`Patents in the IPR proceedings, the Court and the parties will have saved significant costs, time,
`
`and resources that they would otherwise expend litigating this case now. And even if only some
`
`of the claims are invalidated, “there is a significant likelihood that the outcome of the IPR
`
`proceedings will streamline the scope of this case to an appreciable extent.” Uniloc USA, Inc. v.
`
`Samsung Elecs. Am., Inc., No. 2:16-cv-642, 2017 WL 9885168, at *1 (E.D. Tex. June 13, 2017);
`
`see Village Green, 2023 WL 416419, at *6 (“[S]hould the IPRs result in the cancelation of some
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 13 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 14 of 18 PageID #: 614
`
`or all of the asserted claims, ‘either some portion of the litigation will fall away, or the litigation
`
`will come to an end altogether.’”) (quoting NFC Tech., 2015 WL 1069111, at *4).
`
`Moreover, regardless of the outcome, statements made during the IPR proceedings will
`
`very likely narrow issues of infringement and invalidity. See Aylus Networks, Inc. v. Apple Inc.,
`
`856 F.3d 1353, 1362 (Fed. Cir. 2017) (“[S]tatements made by a patent owner during an IPR
`
`proceeding, whether before or after an institution decision, can be considered for claim
`
`construction and relied upon to support a finding of prosecution disclaimer.”); NFC Tech., 2015
`
`WL 1069111, at *7 (determining that even where all claims were not reviewed during IPR
`
`proceedings, “any disposition by the PTAB is likely to simplify the proceedings before this
`
`Court”). A stay will permit the case to proceed in light of all relevant intrinsic evidence. For
`
`example, Orckit will likely make arguments about claim scope to overcome the prior art presented
`
`in the IPR petitions, including in its Patent Owner preliminary responses due pre-institution in
`
`June 2023. Not staying the case now could mean expending the Court’s and the parties’ resources
`
`on claim construction that could be rendered futile if the PTAB finds certain claims invalid or
`
`Orckit takes positions during the IPR proceedings that impact claim scope. See Anascape, Ltd. V.
`
`Microsoft Corp., 475 F. Supp. 2d 612, 615 (E.D. Tex. 2007) (“[C]ourts need not expend
`
`unnecessary judicial resources by attempting to resolve claims which may be amended, eliminated,
`
`or lucidly narrowed by the patent reexamination process and the expertise of its officers.”); Ethicon
`
`LLC v. Intuitive Surgical, Inc., 2019 WL 1276029, at *2 (D. Del. Mar. 20, 2019) (finding stay
`
`pending IPR to be efficient because of additional prosecution history and potential amendments
`
`flowing from IPR proceedings).
`
`Finally, granting a stay will potentially simplify the issues for trial through the application
`
`of estoppel, which will keep Cisco from pursuing certain invalidity theories after a final written
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 14 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 15 of 18 PageID #: 615
`
`decision. Even if the PTAB proceedings were to find some of the reviewed claims to be valid,
`
`Cisco would still be estopped from asserting invalidity defenses on “any ground that it raised or
`
`reasonably could have raised” during inter partes review. 35 U.S.C. § 315(e)(2). The exclusion
`
`of such art from this litigation provides further simplification warranting a stay here.
`
`D.
`
`At Minimum, The Court Should Deny This Motion Without Prejudice So That
`Cisco Can Renew The Motion After The IPR Institution Decisions.
`
`To the extent the Court finds that the likelihood of simplification is too speculative until
`
`the PTAB institutes Cisco’s IPRs, the Court should at minimum deny this motion without prejudice
`
`so that Cisco can renew its motion. This Court has granted renewed motions to stay following
`
`denials without prejudice upon the PTAB later instituting Patent Office challenges. See Ramot at
`
`Tel Aviv Univ. Ltd. v. Cisco Sys., Inc., No. 2:19-cv-00225-JRG, 2021 WL 121154, at *1 (E.D. Tex.
`
`Jan. 13, 2021) (granting Cisco’s renewed motion to stay pending reexamination proceedings after
`
`initially denying Cisco’s request without prejudice to refile the request if and when any relief by
`
`way of the reexams became less speculative or incomplete); Arbor Glob. Strategies LLC v.
`
`Samsung Elecs. Co., No. 2:19-cv-00333-JRG-RSP, 2021 WL 66531, at *1 (E.D. Tex. Jan. 7, 2021)
`
`(granting renewed motion to stay upon institution of Defendants’ IPRs after previously denying
`
`motion without prejudice); e-Watch Inc. v. Apple, Inc., No. 2:13-cv-1061-JRG-RSP, 2015 WL
`
`12915668, at *1 (E.D. Tex. Mar. 25, 2015) (granting renewed motion to stay after denying the
`
`initial motion to stay “without prejudice to [Defendants’] right to file a motion to stay if the PTAB
`
`[] grants the petition to institute”). “The inter partes review process [] was designed to give the
`
`agency an opportunity to correct its mistakes, to give courts the benefit of the agency’s
`
`consideration of the effect of prior art on patents being asserted in litigation, and to reduce the
`
`burden of litigation on the parties and the courts.” In re Intel Corp., No. 2021-168, 2021 WL
`
`4427875, at *2 (Fed. Cir. 2021). For those benefits to apply here, the Court should at minimum
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 15 of 496
`
`

`

`Case 2:22-cv-00276-JRG-RSP Document 55 Filed 03/23/23 Page 16 of 18 PageID #: 616
`
`follow its typical practice and “withhold a ruling pending action on the petition by the PTAB or
`
`deny the motion without prejudice to refiling in the event that the PTAB institutes a proceeding.”
`
`Customedia Techs., LLC, 2017 WL 3836133, at *1.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Cisco respectfully requests that the Court stay this matter
`
`pending the PTAB’s resolution of the IPRs. However, to the extent the Court follows previous
`
`practice, Cisco requests that the Court “withhold a ruling pending action on the petition by the
`
`PTAB or deny the motion without prejudice to refiling in the event that the PTAB institutes a
`
`proceeding.” Id.
`
`Orckit Exhibit 2004
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 16 of 496
`
`

`

`Case 2:22-cv-00276-JRG