Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 1 of 24 PageID #: 4621
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`DALI WIRELESS, INC.,
`
`Plaintiff,
`
`vs.
`
`T-MOBILE US, INC., et al.
`
`Defendants.
`
`Case No. 2:22-cv-00414-RWS-RSP
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ OPPOSED MOTION TO STAY PENDING INTER PARTES REVIEW
`
`DM2\17671592.2
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`

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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 2 of 24 PageID #: 4622
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`2.
`3.
`
`2.
`
`FACTUAL AND PROCEDURAL BACKGROUND.........................................................2 
`A.
`Dali’s Prior And Pending Actions Against CommScope And Ericsson
`Involving One Or More Of The Patents-In-Suit ..................................................... 2 
`1.
`Dali Wireless, Inc. v. CommScope Techs., LLC, et al., 1:19-cv-952
`(D. Del.) ...................................................................................................... 2 
`Dali Wireless, Inc. v AT&T Corp., et al., 2:22-cv-12 (E.D. Tex.) .............. 3 
`Dali Wireless, Inc. v. Cellco Partnership, et al., 6:22-cv-104
`(W.D. Tex.) ................................................................................................. 3 
`Dali Wireless, Inc. v. T-Mobile US, Inc., 2:22-cv-414 (E.D. Tex.) ............ 4 
`4.
`IPRs On The Patents-In-Suit ................................................................................... 5 
`1.
`՚499 patent ................................................................................................... 5 
`a.
`IPR2022-01293 (by CommScope) ...................................................5 
`b.
`IPR2022-01419 (by Ericsson)..........................................................6 
`՚232 patent ................................................................................................... 6 
`a.
`IPR2022-01242 (by CommScope) ...................................................6 
`b.
`IPR2022-01570 (by Ericsson)..........................................................6 
`’343 patent (IPR2022-01345 by Ericsson) ................................................. 7 
`3.
`՚338 patent (IPR2022-01212 by Ericsson) .................................................. 7 
`4.
`՚358 patent (IPR2023-00466 by CommScope) ........................................... 7 
`5.
`’171 patent (IPR2023-00700 by Ericsson) ................................................. 7 
`6.
`’382 patent (IPR2023-00795 by Ericsson) ................................................. 8 
`7.
`ARGUMENT AND CITATIONS TO AUTHORITY ........................................................8 
`A.
`Legal Standard ........................................................................................................ 8 
`B.
`The Court Should Stay The Entire Case ................................................................. 9 
`1.
`There Is A Substantial Likelihood A Stay Will Simplify The Case ........... 9 
`2.
`A Stay Would Not Unduly Prejudice Dali ................................................ 11 
`3.
`The Case Is In Its Infancy, Thus Weighing In Favoring Of A Stay ......... 13 
`That Institution Decisions Have Yet To Issue As To A Minority Of The
`Patents-In-Suit Does Not Outweigh The Potential Simplification ....................... 13 
`CONCLUSION ..................................................................................................................15 
`
`B.
`
`C.
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 3 of 24 PageID #: 4623
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`Cases
`
`TABLE OF AUTHORITIES
`
`Asetek Holdings, Inc. v. Cooler Master Co., 13-cv-457, 2014 WL 1350813
`(N.D. Cal. Apr. 3, 2014) ..........................................................................................................12
`
`Canfield Sci., Inc. v. Drugge, 16-cv-4636, 2018 WL 2973404
`(D.N.J. June 13, 2018) .............................................................................................................14
`
`Clinicomp Int’l, Inc. v. Cerner Corp., 17-cv-2479, 2018 WL 5617694
`(S.D. Cal. Oct. 30, 2018) .........................................................................................................14
`
`CyWee Grp. Ltd. v. Samsung Elecs. Co., 2:17-cv-00140-WCB-RSP,
`2019 WL 11023976 (E.D. Tex. Feb. 14, 2019) ........................................................... 11, 13-14
`
`E.Digital Corp. v. Arcsoft, Inc., 15-cv-56, 2016 WL 452152
`(S.D. Cal. Feb. 3, 2016) ...........................................................................................................14
`
`Evolutionary Intelligence, LLC v. Apple, Inc., 13-cv-04201, 2014 WL 93954
`(N.D. Cal. Jan. 9, 2014) ...........................................................................................................11
`
`Image Processing Techs., LLC v. Samsung Elecs. Co., 2:16-cv-505,
`2017 WL 7051628 (ED. Tex. Oct. 8, 2014) ............................................................................14
`
`Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., 6:15-CV-59,
`2016 WL 4394485 (E.D. Tex. May 12, 2016) .....................................................................9, 14
`
`KLA-Tencor Corp. v. Nanometrics, Inc., 05-cv-03116-JSW, 2006 WL 708661
`(N.D. Cal. Mar. 16, 2006) ........................................................................................................12
`
`NFC Tech. LLC v. HTC Am., 2:13-cv-1058, 2015 WL 1069111 .................................. 9-10, 12, 14
`
`OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49–50
`(Oct. 4, 2022) .............................................................................................................................6
`
`Parsons Xtreme Golf LLC v. Taylor Made Golf Co., 17-cv-3125,
`2018 WL 6242280 (D. Ariz. Nov. 29, 2018) ...........................................................................14
`
`Personal Audio LLC v. Google, Inc., 1:15-cv-350, 2015 WL 12915558
`(E.D. Tex. Nov. 3, 2015) .........................................................................................................14
`
`PersonalWeb Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022 (N.D. Cal. 2014) ..........................14
`
`Realtime Data, LLC v. Hewlett Packard Enter. Co., 6:16-cv-86,
`2017 WL 3712916 (E.D. Tex. Feb. 3, 2017) ..................................................................... 14-15
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 4 of 24 PageID #: 4624
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`Scorpcast, LLC v. Boutique Media, No. 2:20-cv-00193-JRG-RSP,
`2021 WL 3514751 (E.D. Tex. June 8, 2021) .....................................................................10, 13
`
`SSL Servs., LLC v. Cisco Sys., Inc., 2:15-cv-433-JRG-RSP, Dkt. 123
`(E.D. Tex. June 27, 2016) ........................................................................................................11
`
`Stingray Music USA, Inc. v. Music Choice, 2:16-cv-00586-JRG-RSP,
`2017 WL 9885167 (E.D. Tex. Dec. 12, 2017) ...................................................................12, 14
`
`Stragent LLC v. BMW of N. Am., LLC, 6:16-cv-446, 2017 WL 3709083
`(E.D. Tex. July 11, 2017) ................................................................................................... 12-13
`
`TC Tech. LLC v. T-Mobile USA, Inc., 6-20-cv-00899-ADA, 2021 WL 8083373
`(W.D. Tex. Dec. 7, 2021).........................................................................................................10
`
`Uniloc USA, Inc. v. Avaya Inc., 6:15-cv-01168-JRG, 2017 WL 2882725
`(E.D. Tex. Apr. 19, 2017) ....................................................................................................9, 12
`
`Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., 2:16-cv-642, 2017 WL 9885168
`(E.D. Tex. June 13, 2017) ........................................................................................................14
`
`Veraseal LLC v. Costco Wholesale Corp., 2:17-cv-713-RWS-RSP,
`2018 WL 4524122 (E.D. Tex. May 18, 2018) .........................................................................13
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`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F. 3d 1307 (Fed. Cir. 2014) .................... 10, 12-13
`
`Statutes
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`35 U.S.C. § 315(e)(2) .....................................................................................................................11
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`ii
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 5 of 24 PageID #: 4625
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`TABLE OF RELATED CASES AND PENDING IPRS
`
`2:22-cv-12 (EDTX) 2:23-cv-161 (EDTX)
`CommScope/
`Ericsson/
`AT&T
`AT&T
`X
`X
`X
`X
`
`
`
`X
`X
`
`
`
`
`
`
`2:23-cv-2 (EDTX)
`CommScope/
`Verizon
`X
`X
`
`
`
`
`
`
`6:22-v-1313 (WDTX)
`Ericsson/
`Verizon1
`X2
`X
`X
`X
`
`
`
`
`2:22-cv-414 (EDTX)
`CommScope/
`Ericsson/
`T-Mobile
`T-Mobile
`
`X
`X
`X
`
`X
`
`X
`X
`
`X
`X
`X
`X
`
`
`
`Patent
`
`’232
`’499
`’343
`’3383
`’358
`’171
`’382
`
`Key:
`
`IPR instituted
`
`IPR filed & awaiting
`institution decision
`
`
`
`
`
`
`
`1 The case has been stayed as to Verizon. See Case No. 6:22-v-1313, Dkt. 22 (W.D. Tex.).
`2 Dali has agreed to drop the ’232 patent based upon the claim construction issued in that case. The parties are currently negotiating
`the particulars of the dismissal.
`3 Dali also asserts the ’338 patent against CommScope in the District of Delaware. Dali Wireless, Inc. v. CommScope Technologies,
`Inc., 1:19-cv-00952 (D. Del.). Following the court’s Markman rulings as to the ’338 Patent, Dali stipulated to judgment of non-
`infringement. The court’s claim constructions are currently on appeal. See Dali Wireless Inc. v. CommScope Technologies LLC, 22-
`1699, Dkt. 17, at 2 (Fed. Cir.) (Statement of the Issues).
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 6 of 24 PageID #: 4626
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`The PTAB has instituted IPRs as to four of the seven patents-in-suit - the ’232, ’499, ’338,
`
`and ’343 patents - and CommScope and Ericsson timely filed IPRs as to the remaining three patents
`
`- the ’358, ’382, and ’171 patents - and are simply awaiting institution decisions. Defendants thus
`
`respectfully request the Court stay this case pending the PTAB’s review of the patents-in-suit.
`
`The unique facts and current posture of the case - and in particular the existence of several
`
`co-pending, related cases involving an overlapping subset of patents and parties - strongly suggest
`
`that a stay would substantially simplify the issues in dispute. Specifically, this is one of five cases
`
`currently pending before this Court and the Western District of Texas involving one or more of
`
`the same patents-in-suit and involving the same defendants and accused products - i.e.,
`
`CommScope and Ericsson as vendors to each of AT&T, Verizon, and T-Mobile. As summarized
`
`in the Table of Related Cases and Pending IPRs, in each of the five pending, related actions, IPRs
`
`have been instituted as to all patents-in-suit or a substantial majority (in which case IPRs have
`
`been filed and are simply awaiting institution decisions). In each order instituting inter partes
`
`review, the PTAB granted institution as to all claims (and thus all asserted claims) and on all
`
`grounds, which in some IPRs included up to seven invalidity grounds. Indeed, the PTAB has
`
`already expressly held that the merits of the IPRs challenging the validity of the ’232 and ’499
`
`patents are “compelling.” A stay while the PTAB reviews the validity of each of the patents-in-
`
`suit would therefore relieve this Court (and the Western District) from, for example, trying the
`
`validity of the ’232 and ’499 patents five times, the ’338 patent three times, and the ’343 and ’358
`
`patents two times, all while the same work is being conducted by the PTAB.
`
`A stay is also appropriate because this case is in its infancy. Dali only just served its
`
`infringement contentions on April 10, and a scheduling conference has not yet occurred (April 24).
`
`Moreover, although Dali initially filed actions against CommScope and Ericsson on five of the
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 7 of 24 PageID #: 4627
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`seven patents-in-suit in January 2022, it delayed an additional ten months before bringing the
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`present suit and asserting two new patents (the ’171 and ’382 patents), which are now also subject
`
`to pending IPR petitions. Thus, Dali itself has not shown any diligence in bringing this action. A
`
`stay would also not unduly prejudice Dali, which does not practice the patents-in-suit and is thus
`
`only seeking a monetary recovery.
`
`I.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`A.
`
`Dali’s Prior And Pending Actions Against CommScope And Ericsson
`Involving One Or More Of The Patents-In-Suit
`
`Dali’s procedural wrangling has created a web of actions across multiple jurisdictions
`
`involving an overlapping set of patents, as described more fully below. Defendants seek to
`
`simplify these multiple actions by staying the cases and allowing the PTAB a short period of time
`
`to evaluate the validity of Dali’s patents.
`
`1.
`
`Dali Wireless, Inc. v. CommScope Techs., LLC, et al., 1:19-cv-952 (D.
`Del.)
`
`In 2019, Dali alleged that CommScope infringed four of its patents related to distributed
`
`antenna systems (“DAS”), one of which was the ’338 patent that it asserts in this case against
`
`Ericsson/T-Mobile. Dali Wireless, Inc. v. CommScope Techs., LLC, et al., 1:19-cv-952, Dkt. 1
`
`(D. Del.). On March 24, 2022, following a claim construction ruling and a supplemental claim
`
`construction, Dali admitted that it could not make a case of infringement as to the ’338 patent, and
`
`the District of Delaware subsequently entered final judgment of non-infringement in favor of
`
`CommScope. Id., Dkt. 326. Dali has since appealed the claim constructions that led to its
`
`stipulated judgment of non-infringement, which appeal is currently fully briefed and awaiting oral
`
`argument before the Federal Circuit. Dali Wireless, Inc. v. CommScope Techs., LLC, 22-1699,
`
`Dkt. 17 at 2 (Fed. Cir.) (Statement of the Issues). Those same constructions are at issue in related
`
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 8 of 24 PageID #: 4628
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`proceedings pending before this Court. See 2:22-cv-12, Dkt. Nos. 113, 118, 122 (discussing the
`
`’338 patent terms).
`
`2.
`
`Dali Wireless, Inc. v AT&T Corp., et al., 2:22-cv-12 (E.D. Tex.)
`
`On January 7, 2022, Dali brought suit against AT&T, CommScope, and Ericsson, alleging
`
`infringement of four of the seven patents-in-suit here—the ’232, ’499, ’338, and ’358 patents—
`
`based upon AT&T’s use of the same products accused in this case. Following the parties’
`
`stipulation, the Court severed the AT&T action into two cases. Id., Dkt. 123. Dali served its
`
`infringement contentions on July 12, 2022, and served amended contentions on Ericsson on
`
`December 14, 2022. Both cases have yet to have a Markman hearing (scheduled for April 25
`
`before this Court), and fact discovery remains open. The tables below show the patents asserted
`
`in each of the severed cases, where red indicates at least one IPR has been instituted, and yellow
`
`indicates that an IPR has been filed and is simply awaiting an institution decision.
`
`Dali Wireless, Inc. v. AT&T Corp., et al. (Ericsson/AT&T), 2:23-cv-161 (E.D. Tex.)
`
`’232
`
`’499
`
`’338
`
`
`
`Dali Wireless, Inc. v. AT&T Corp., et al. (CommScope/AT&T), 2:22-cv-12 (E.D. Tex.)
`
`’232
`
`’499
`
`’358
`
`Defendants moved to stay the cases pending the resolution of the IPRs, which motion remains
`
`pending before the Court. 2:22-cv-12, Dkt. 119 (E.D. Tex.).
`
`3.
`
`Dali Wireless, Inc. v. Cellco Partnership, et al., 6:22-cv-104 (W.D. Tex.)
`
`
`
`On January 27, 2022, Dali filed suit against, inter alia, Verizon, CommScope, and Ericsson
`
`and alleged infringement of four of the seven patents-in-suit here—the ’232, ’499, ’343, and ’338
`
`patents—based upon Verizon’s use of the same CommScope and Ericsson products accused here.
`
`Per the parties’ stipulation, the court severed the action into two cases, transferred the severed
`
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 9 of 24 PageID #: 4629
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`action against CommScope/Verizon to this Court (6:22-cv-104, Dkt. 95 (W.D. Tex.)), and then
`
`later stayed Dali’s claims against Verizon in the remaining action against Ericsson/Verizon (6:22-
`
`cv-1313, Dkt. 30 (W.D. Tex.)). The two below tables show the patents asserted in each of the
`
`severed cases and use the same color format as the above tables to confirm that IPRs have been
`
`instituted as to all patents at issue in those cases.
`
`Dali Wireless, Inc. v. Cellco Partnership, et al. (CommScope), 2:23-cv-2 (E.D. Tex.)
`
`’232
`
`’499
`
`This case is currently set for Markman on April 25, 2023 (with the AT&T action), but no schedule
`
`has been entered. Defendants moved to stay the case pending IPRs. 2:23-cv-2, Dkt. 114.
`
`Dali Wireless, Inc. v. Ericsson Inc., et al., 6:22-cv-1313 (W.D. Tex.)
`
`’2324
`
`’499
`
`’343
`
`’338
`
`Fact discovery remains ongoing, and no depositions have yet been scheduled. Ericsson moved to
`
`stay this case pending the IPRs on March 14, 2023. 6:22-v-1313, Dkt. 33 (W.D. Tex.). That
`
`motion is fully briefed and is awaiting a decision in the Western District.
`
`4.
`
`Dali Wireless, Inc. v. T-Mobile US, Inc., 2:22-cv-414 (E.D. Tex.)
`
`Dali brought the present case on October 21, 2022—over ten months after it first brought
`
`suit against CommScope and Ericsson in the AT&T action—alleging infringement of the same
`
`five patents it previously asserted against these defendants—the ’232, ’499, ’343, ’338, and ’358
`
`patents—plus two newly-asserted patents—the ’171 and ’382 patents, both of which also involve
`
`DAS technology. Dali served its infringement contentions on April 10, 2023, and a scheduling
`
`
`4 Dali has agreed to stipulate to judgment of non-infringement of the ’232 patent based upon the
`Western District’s claim construction. The parties are currently negotiating the specifics of that
`dismissal. Ericsson is advocating for that same construction in the AT&T action. 2:22-cv-12, Dkt.
`118 at 13.
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`4
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 10 of 24 PageID #: 4630
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`conference is currently set for April 24, 2023. The table below shows the patents asserted against
`
`each vendor as set forth in Dali’s infringement contentions, and uses the same color format as the
`
`above tables to depict the status of the IPRs.5
`
`Patents asserted against CommScope/T-Mobile
`
`
`
`’499
`
`
`
`
`
`‘358
`
`’171
`
`’382
`
`
`
`Patents asserted against Ericsson/T-Mobile
`
`’232
`
`’499
`
`’343
`
`’338
`
`
`
`’171
`
`’382
`
`B.
`
`IPRs On The Patents-In-Suit
`
`As discussed further below, the PTAB has instituted inter partes review as to four of the
`
`patents-in-suit, and institution decisions are upcoming as to the remaining three.
`
`1.
`
`՚499 patent
`a.
`
`IPR2022-01293 (by CommScope)
`
`CommScope filed for IPR of the ՚499 patent on July 20, 2022, challenging all claims. Ex.
`
`A. The PTAB instituted on March 9, 2023. Ex. B. The final decision is expected by March 9,
`
`2024. CommScope asserted seven separate invalidity grounds and the PTAB instituted on “all the
`
`grounds set forth in the petition,” and all claims. Id. at 8, 41. The PTAB also conducted an
`
`additional analysis to determine if the merits of the invalidity argument presented a “compelling-
`
`merits challenge,” which is a “higher standard” than normally required for institution and requires
`
`invalidity be “highly likely,” not just likely. Id. at 16-17 (citing OpenSky Indus., LLC v. VLSI
`
`
`5 The infringement contentions differ from the Complaint in several material respects as to
`CommScope/T-Mobile. Specifically, the infringement contentions do not include allegations as
`to the ’232 and ‘343 patents, but add assertions as to the ’171 patent. Dali has yet to move to
`amend the complaint to reflect these new assertions.
`
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`5
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 11 of 24 PageID #: 4631
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`Tech. LLC, IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022) (precedential)). Under this standard,
`
`the PTAB expressly found the “merits of this case to be compelling.” Id. According to the PTAB,
`
`“Claim 1 does not appear to encompass a high level of detail, and each element of the claimed
`
`system is persuasively shown to be present in [the prior art].” Id. at 17. The PTAB thus concluded
`
`it was “highly likely” that CommScope would “prevail” on this representative claim and thus
`
`presented a “compelling, meritorious challenge that plainly leads to a conclusion that at least one
`
`challenged claim is unpatentable.” Id. at 18. T-Mobile has moved to join this IPR. Exs. E, F.
`
`b.
`
`IPR2022-01419 (by Ericsson)
`
`Ericsson filed IPR2022-01419 on August 15, 2022. Ex. C. The PTAB instituted review
`
`on all claims (1-19) and on all asserted grounds, on March 9, 2023. Ex. D. The Ericsson petition
`
`relies on the same reference that the PTAB found to present a “compelling” invalidity case in the
`
`CommScope petition. Ericsson further agreed that if the IPR was instituted, it would not pursue
`
`in this Court “any ground raised or that could have been reasonably raised in an IPR for the
`
`challenged patent.” Id. at 28. The final written decision is expected by March 2024.
`
`2.
`
`՚232 patent
`a.
`
`IPR2022-01242 (by CommScope)
`
`CommScope filed for IPR of the ՚232 patent on July 1, 2022. Ex. G. As with the ’499
`
`patent, the PTAB instituted on all seven grounds and as to all claims. Ex. H, at 7-8, 76. The PTAB
`
`also determined this IPR met the higher “compelling” case standard. Id. at 74 (“Petitioner has set
`
`forth a compelling, meritorious challenge”). In doing so, the PTAB conducted a 14-page analysis
`
`of the strength of the challenge to representative claim 1 and held that it was “highly likely” that
`
`CommScope would “prevail” on this representative claim. Id. at 60-74. The final decision is
`
`expected by March 2024.
`
`b.
`
`IPR2022-01570 (by Ericsson)
`
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`6
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`Case 2:22-cv-00414-RWS-RSP Document 57 Filed 04/17/23 Page 12 of 24 PageID #: 4632
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`Ericsson filed IPR2022-01570 on September 23, 2022. Ex. I. An institution decision is
`
`expected by May 2023. In its petition, Ericsson agreed that if instituted, it would not pursue in
`
`this Court any ground raised or that could have been reasonably raised in an IPR. Id. at 72.
`
`3.
`
`’343 patent (IPR2022-01345 by Ericsson)
`
`Ericsson filed IPR2022-01345 on August 3, 2022 (Ex. J), and the PTAB instituted review
`
`on all claims (1-22) and all grounds, on March 9, 2023. Ex. K. A final written decision is expected
`
`by March 2024. In its petition, Ericsson agreed that if instituted, it would not pursue in this Court
`
`any ground raised or that could have been reasonably raised in an IPR. Ex. K. at 44-45.
`
`CommScope and T-Mobile timely moved to join this IPR. Exs. L, M, N, O.
`
`4.
`
`՚338 patent (IPR2022-01212 by Ericsson)
`
`Ericsson filed IPR2022-01212 on July 22, 2022 (Ex. P), and the PTAB instituted a review
`
`on February 1, 2023 on all claims (1-12) and on all asserted grounds (Ex. Q, at 57). As to asserted
`
`claims 1-2, Ericsson presented two invalidity challenges, and the PTAB undertook a limitation-
`
`by-limitation analysis as to both grounds and rejected each of Dali’s arguments. See generally id.
`
`at 20-54. Ericsson agreed that if the IPR was instituted, it would not pursue in this Court “any
`
`ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Id.
`
`at 55-56. The final written decision is expected by February 1, 2024.
`
`5.
`
`՚358 patent (IPR2023-00466 by CommScope)
`
`CommScope filed for IPR on the ՚358 patent on January 12, 2023. Ex. R. The institution
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`decision is expected in July 2023. The petition alleges that all asserted claims are invalid on four
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`or more grounds. Id.
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`6.
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`’171 patent (IPR2023-00700 by Ericsson)
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`The ’171 patent is related to the ’338 patent. Ericsson filed for IPR on all claims of the
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`’171 patent on March 15, 2023. Ex. S. An institution decision is expected by September. In its
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`petition, Ericsson notes that the claims of the ’171 patent were initially rejected based on non-
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`statutory double patenting over the ’338 patent (which, as noted above, is itself subject to an
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`instituted IPR). Id. at 14. Ericsson agreed that if the IPR is instituted, it would not pursue in this
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`Court any ground raised or that could have been reasonably raised. Id. at 81.
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`7.
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`’382 patent (IPR2023-00795 by Ericsson)
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`Ericsson filed for IPR on all claims of the ’382 patent on April 4, 2023. Ex. T. A filing
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`date has not yet been accorded. In its petition, Ericsson agreed that if instituted, it would not pursue
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`in this Court any ground raised or that could have been reasonably raised in an IPR. Id. at 88-89.
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`The below table summarizes the current status of each of the IPRs:
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`Patent
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`IPR
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`Challenged Claims
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`Date Instituted
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`Final Written
`Decision
`March 2024
`TBD (5/2024)
`March 2024
`March 2024
`March 2024
`Feb. 2024
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`IPR2022-01242
`IPR2022-01570
`IPR2022-01293
`IPR2022-01419
`IPR2022-01345
`IPR2022-01212
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`1-20 (all)
`1-20 (all)
`1-19 (all)
`1-19 (all)
`1-22 (all)
`1-12 (all)
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`March 17, 2023
`Expected May 2023
`March 9, 2023
`March 9, 2023
`March 9, 2023
`Feb. 1, 2023
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`’232
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`’499
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`’343
`’338
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`’358
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`IPR2023-00466 7- 9, 11, 15, 17, 18,
`20-21 (all asserted)
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`Expected July 2023
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`TBD (7/2024)
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`’171
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`IPR2023-00700
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`1-20 (all)
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`Expected September 2023 TBD (9/2024)
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`’382
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`IPR2023-00795
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`1-19 (all)
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`IPR filed April 4, 2023
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`TBD
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`II.
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`ARGUMENT AND CITATIONS TO AUTHORITY
`A.
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`Legal Standard
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`Whether to grant a stay pending IPR is “committed to the district court’s discretion.” NFC
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`Tech. LLC v. HTC Am., 2:13-cv-1058, 2015 WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015. District
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`courts consider three main factors:
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`(1) whether the stay will unduly prejudice the nonmoving party;
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`(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
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`(3) whether the stay will likely result in simplifying the case before the court.
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`Id. at *2. The “most important factor” is the prospect that the IPRs “will result in simplification of
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`the issues before the Court.” Id. at *12; see also Intellectual Ventures II LLC v. BITCO Gen. Ins.
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`Corp., 6:15-CV-59, 2016 WL 4394485, at *3 (E.D. Tex. May 12, 2016) (same).
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`B.
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`The Court Should Stay The Entire Case
`1.
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`There Is A Substantial Likelihood A Stay Will Simplify The Case
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`The PTAB’s decision to institute inter partes review “ordinarily means that there is a
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`substantial likelihood of simplification of the district court litigation.” NFC Techs., 2015 WL
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`1069111, at *4; see also Uniloc USA, Inc. v. Avaya Inc., 6:15-cv-01168-JRG, 2017 WL 2882725,
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`at *3 (E.D. Tex. Apr. 19, 2017) (“[I]n light of the fact that the PTAB has instituted review on all
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`claims asserted … the ‘simplification’ factor weighs strongly in favor of granting a stay in this
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`case pending the completion of the IPR process.”). This District has explained:
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`Congress’s purpose in creating an inter partes review procedure was to allow the
`administrative agency that issues patents to consider new information bearing on
`whether those patents should be canceled or confirmed. Giving the agency the
`authority to consider the validity of patents in the inter partes review process was
`designed in large measure to simplify proceedings before the courts and to give the
`courts the benefit of the expert agency’s full and focused consideration of the effect
`of prior art on patents being asserted in litigation.
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`NFC Techs., 2015 WL 1069111, at *4. A stay “may eliminate the need for trial entirely. … If the
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`examiner invalidates the claims, that will fully resolve this case.” TC Tech. LLC v. T-Mobile USA,
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`Inc., 6-20-cv-00899-ADA, 2021 WL 8083373, at *3 (W.D. Tex. Dec. 7, 2021).
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`
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`Here, the PTAB has already instituted one or more IPRs on four of the seven patents-in-
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`suit. As to these patents, at a minimum, the question to be answered is not whether a stay is
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`appropriate: the “near-uniform line of authority reflects the principal point made by [the Federal
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`Circuit] in VirtualAgility—that after the PTAB has instituted review proceedings, the parallel
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`district court litigation ordinarily should be stayed.” NFC Techs., 2015 WL 1069111, at *7.
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`Rather, the issue before the Court is “whether there are circumstances in this case that would call
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`for a departure from that general practice and make a stay inappropriate.” Id. Here, there are no
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`such special circumstances and, indeed, this case presents additional reasons to follow the general
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`practice even as to the three patents for which institution decisions are still pending.
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`First, the PTAB has found it likely that all claims of the ’499, ’232, ’343, and ’338 patents
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`are invalid based on multiple invalidity grounds. Exs. B, D, H, K, Q. In doing so, the “PTAB has,
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`in essence, indicated that the asserted claims are likely unpatentable.” Scorpcast, LLC v. Boutique
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`Media, No. 2:20-cv-00193-JRG-RSP (lead case), 2021 WL 3514751, at *3 (E.D. Tex. June 8,
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`2021) (defendants met their burden to show a substantial likelihood of simplification where PTAB
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`granted institution on more than one asserted ground).
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`Second, as to the ’232 and ’499 patents in particular, the PTAB expressly found the IPR
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`petitions met the even higher “compelling merit” standard. Exs. B, H. This weighs strongly in
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`favor of a stay.
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`Third, each of the ’499, ’232, ’343, ’338, and ’358 patents is involved in multiple cases,
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`across two jurisdictions. See § I.A., infra. CommScope and Ericsson have moved to stay each of
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`those cases pending final written decisions in the IPRs. By entering a stay, the parties and the
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`courts will be relieved of having to undertake duplicative invalidity determinations across multiple
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`cases and forums. See SSL Servs., LLC v. Cisco Sys., Inc., 2:15-cv-433-JRG-RSP, Dkt. 123 (E.D.
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`Tex. June 27, 2016) (“If Cisco prevails in the IPR, then one or more asserted claims will be
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`invalidated and eliminated from this case. To the extent claims are not invalidated, the IPR
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`proceeding will remove prior art from this case under the estoppel provisions of 35 U.S.C. §
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`315(e)(2). Accordingly, the Court finds there is a high likelihood of issue simplification in this
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`case. This factor weighs heavily in favor of a stay.”). A stay presents the best opportunity to
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`conserve limited judicial resources. CyWee Grp. Ltd. v. Samsung Elecs. Co., 2:17-cv-00140-
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`WCB-RSP, 2019 WL 11023976, at *9 (E.D. Tex. Feb. 14, 2019) (“[A]llowing the PTO to
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`adjudicate the validity of the six claims before it in the two IPR proceedings reduces what
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`otherwise would be unavoidable duplication of effort and a possibility of inconsistent results
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`between the administrative agency and the court.”); see also Evolutionary Intelligence, LLC v.
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`Apple, Inc., 13-cv-04201, 2014 WL 93954, at *3 (N.D. Cal. Jan. 9, 2014) (“There is also little
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`benefit to be gained from having two forums review the validity of the same claims at the same
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`time.”).
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`Fourth, as noted above, the claim constructions of the ’338 patent are currently being
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`appealed to the Federal Circuit as part of Dali’s case against CommScope pending in the District
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`of Delaware. Dali Wireless Inc. v. CommScope Techs. LLC, Case No. 22-1699 (Fed. Cir.). To the
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`extent the ’338 patent survives Ericsson’s IPR, a stay would provide this Court the benefit of both
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`the PTAB’s and the Federal Circuit’s guidance. See id., Dkt. 17 (Dali’s opening brief, challenging
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`the D. Del. claim constructions that formed the basis of the judgment of non-infringement).
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`This “most important factor” weighs heavily in favor of a stay.
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`2.
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`A Stay Would Not Unduly Prejudice Dali
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`A short stay of the district court proceedings while the PTAB renders its final decisions on
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`the pending petitions would not u