Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 1 of 11 PageID #: 2456
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`CHIEN–MIN SUNG,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
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`Defendants.
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`Case No. 4:23–CV–752
`JURY TRIAL DEMANDED
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`REPLY IN SUPPORT OF DEFENDANTS’ MOTION TO STAY
`PENDING RESOLUTION OF TI’S MOTION FOR SUMMARY JUDGMENT
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`
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`IPR2024-00533
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1030
`Ex. 1030, Page 1
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 2 of 11 PageID #: 2457
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`TABLE OF CONTENTS
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`Page
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`THE GOOD CAUSE STANDARD SUPPORTS STAYING THE CASE
`BEFORE THE COMPLETION OF CLAIM CONSTRUCTION BRIEFING. ..................1
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`PLAINTIFF FAILS TO REBUT DEFENDANTS’ SHOWING THAT THE
`ERICSSON FACTORS ALSO FAVOR AN IMMEDIATE STAY. ...................................3
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`CONCLUSION ....................................................................................................................5
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`I.
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`II.
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`III.
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`i
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`EX1030, Page 2
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 3 of 11 PageID #: 2458
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`
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Ameranth, Inc. v. Par Tech. Corp.,
`No. 2:10–CV–294, 2011 WL 4370539 (E.D. Tex. Aug. 16, 2011) ...........................................5
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`Promethean Insulation Tech. LLC v. Sealed Air Corp.,
`No. 2:13–CV–1113, Dkt. No. 222 (E.D. Tex. July 22, 2015) ...................................................5
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`Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt.,
`LLC, 778 F.3d 1311 (Fed. Cir. 2015) ....................................................................................1, 2
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`Sung v. Texas Instruments Inc.,
`No. 4:23–CV–00753, Dkt. No. 68 (E.D. Tex. May 14, 2024) ...............................................2, 5
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`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
`No. 2:19–CV–00259, 2020 WL 1433960 (E.D. Tex. Mar. 24, 2020) ...................................4, 5
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`35 U.S.C. § 315(e)(2) ...................................................................................................................2, 4
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`STATUTES
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`ii
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`EX1030, Page 3
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 4 of 11 PageID #: 2459
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`Both parties agree that the case should be stayed pending resolution of Texas Instruments’
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`(“TI”) motion for summary judgment. Mot. 1; Opp. 12 (“Dr. Sung has agreed to stay these
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`proceedings. . . .”). The only issue for the Court to resolve is when the stay should take effect—
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`before or after the parties complete claim construction briefing and parallel discovery. As stated
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`in the Motion, Defendants submit that a stay now would save the parties additional expenses
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`associated with claim construction briefing and at least five weeks of further discovery, but
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`otherwise defer to the Court’s sound judgment on the timing. Mot. 7–8. Defendants nevertheless
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`briefly respond to several of Plaintiff’s arguments in this Reply.
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`Plaintiff also suggests—without much analysis or legal support—that Defendants should
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`be estopped from raising the same invalidity argument advanced in TI’s motion for summary
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`judgment. Opp. 9–11. Although it is highly unlikely that Defendants would “us[e] the exact same
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`arguments word-for-word” (id. at 10) if the Court denies TI’s motion, Plaintiff points to no case
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`law that warrants estoppel, and there is no basis for that request.
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`I.
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`THE GOOD CAUSE STANDARD SUPPORTS STAYING THE CASE BEFORE
`THE COMPLETION OF CLAIM CONSTRUCTION BRIEFING.
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`Plaintiff argues that this case should proceed with discovery and claim construction
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`briefing that may eventually prove needless. Opp. 5. But Plaintiff’s arguments mischaracterize
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`the law, ignore this Court’s ruling in the similarly situated TI Case, and actually showcase why
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`there is good cause for an immediate stay.
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`First, Plaintiff argues that TI’s motion for summary judgment “does not support Samsung’s
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`requested stay” because the two cases involve different parties. Opp. 6. But Plaintiff asserts the
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`same patents and claims against Defendants that are the subject of TI’s motion. Mot. 1, 4, 6. An
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`invalidity finding in the TI Case would thus render the same asserted patents and claims invalid in
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`this case. Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311,
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`EX1030, Page 4
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 5 of 11 PageID #: 2460
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`1313–16 (Fed. Cir. 2015) (affirming invalidity of asserted claims due to issue preclusion).1
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`Plaintiff further asserts that TI’s motion for summary judgment does not justify a stay in
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`this case because Defendants are not “bound by the outcome” of TI’s motion. Opp. 6 (emphasis
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`omitted). But that fact bears no relation to the underlying merits of the stay—as the Court
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`recognized, a stay pending TI’s motion serves efficiency in resolution of the dispute (see Fed. R.
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`Civ. P. 1); likewise, Plaintiff will be bound by an invalidity finding against him, resolving this
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`case. That efficiency rationale does not depend on any sort of estoppel against Defendants, or, for
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`that matter, against TI. If the Court denies TI’s motion because, for example, the Court finds that
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`material factual disputes exist, TI can still raise the same invalidity arguments at trial and present
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`those factual disputes to the jury. This is not a motion to stay pending resolution of inter partes
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`review (“IPR”) proceedings where statutory estoppel attaches upon a Final Written Decision by
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`the Patent Trial and Appeal Board. 35 U.S.C. § 315(e)(2). In short, efficiency justifies the stay
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`in this case just as it did in the TI case, and Plaintiff’s estoppel-based complaints are immaterial.
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`Second, Plaintiff fails to even acknowledge this Court’s ruling that good cause existed to
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`stay the TI Case because it “can be resolved without the need for further discovery or claim
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`construction.” Civ. Action No. 4:23–CV–00753–SDJ (“TI Case”), Dkt. No. 68 at 2 (emphasis
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`1 In Sovereign Software, a jury had found that the defendants infringed five claims from two patents
`and that those claims were not invalid (the “first case”). Id. at 1313, 1314. The district court in
`the first case entered judgment in favor of the plaintiff. Id. In another case (the “second case”),
`the Federal Circuit reversed a district court’s judgment of infringement and no invalidity, finding
`the same five claims at-issue in the first case invalid as obvious. Id. Applying Fifth Circuit law,
`the Federal Circuit then held that issue preclusion rendered the claims in the first case invalid as a
`result of the invalidity finding in the second case. Id. at 1313, 1315 (“The Supreme Court has held
`that a defense of issue preclusion applies where a party is facing a charge of infringement of a
`patent that has once been declared invalid, even though the party asserting the defense was not a
`party to the action where the patent was invalidated. . . . We have similarly held that once the
`claims of a patent are held invalid in a suit involving one alleged infringer, an unrelated party who
`is sued for infringement of those claims may reap the benefit of the invalidity decision under
`principles of collateral estoppel.”) (internal citations and quotations omitted).
`2
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`EX1030, Page 5
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 6 of 11 PageID #: 2461
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`added). Plaintiff’s contention that the parties should proceed with further discovery and claim
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`construction ignores the Court’s ruling in the TI Case. Mot. 3–5. No further discovery or claim
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`construction briefing in this case will impact the resolution of TI’s motion for summary judgment.
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`Third, Plaintiff complains that Defendants served an additional third–party subpoena while
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`the parties were briefing the motion to stay. Opp. 8. But the fact that Defendants must proceed
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`with discovery absent a stay makes Defendants’ point: the parties continue to incur expenses in a
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`case that may ultimately be fully resolved by TI’s motion for summary judgment. Plaintiff cannot
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`expect Defendants to cease discovery and act like a stay is in place before a stay is actually granted.
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`II.
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`PLAINTIFF FAILS TO REBUT DEFENDANTS’ SHOWING THAT THE
`ERICSSON FACTORS ALSO FAVOR AN IMMEDIATE STAY.
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`Plaintiff’s arguments under the Ericsson factors are similarly unavailing.
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`Under the first Ericsson factor (undue prejudice to non-movant), Plaintiff contends that a
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`stay disadvantages him if the stay issues after Plaintiff files his opening claim construction brief
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`(filed June 12) but before Defendants file their responsive claim construction brief (due July 3).
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`Opp. 9. But that purported tactical disadvantage is of Plaintiff’s own making. Defendants asked
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`Plaintiff to agree to stay the case on May 14—the same day the Court stayed the TI Case—before
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`the parties submitted their P.R. 4–3 Joint Claim Construction and Prehearing Statement, before
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`the parties conducted claim construction discovery, and well before either party filed any claim
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`construction brief. Dkt. No. 56–6 (May 14, 2024 email from Cosmin Maier, counsel for
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`Defendants); Dkt. No. 37 (Scheduling Order). Plaintiff refused and instead opted to proceed with
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`claim construction briefing while this motion is resolved.2
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`2 A minor point: Plaintiff requested a one-week extension to file its opposition to Defendants’ stay
`motion (Ex. 1 at 2); Defendants stated that they would not oppose, provided that Plaintiff would
`not use the extension as a basis for opposing the stay (id. at 1); Plaintiff agreed (id.), yet appears
`to have reneged on that agreement by arguing that an immediate stay is unwarranted because, for
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`3
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`EX1030, Page 6
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 7 of 11 PageID #: 2462
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`Plaintiff also argues that he will be disadvantaged because no estoppel attaches to
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`Defendants as a result of TI’s motion for summary judgment. Opp. 9. In particular, Plaintiff
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`argues that Defendants would not be estopped from “using the exact same arguments word-for-
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`word” if the Court denies TI’s motion for summary judgment. Id. at 10; see also id. at 9. But that
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`argument is entirely misplaced. Not only is it peculiar to assume that Defendants would raise “the
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`exact same arguments word-for-word” (id. at 10) in this case if TI’s motion for summary judgment
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`is denied, it remains true that even TI is not necessarily estopped from pursuing the same grounds
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`at trial. If, for example, the Court denies TI’s motion for summary judgment because it finds
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`material factual disputes, TI is still free to present those factual disputes to the jury. As noted
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`above, the efficiency justification of the stay exists entirely independent of any estoppel issues.
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`Dr. Sung’s reliance on Uniloc 2017 is misguided. See Opp. 10. Uniloc 2017 concerned a
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`motion to stay pending resolution of IPRs filed by non–parties. Unlike a summary judgment
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`motion, a Final Written Decision in an IPR proceeding results in a statutory estoppel that binds
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`the petitioner and its real-parties-in-interest. 35 U.S.C. § 315(e)(2). In Uniloc 2017, the court was
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`concerned that the defendants might gain a tactical advantage because it appeared that they were
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`not subject to the statutory estoppel that applied to the non–parties who filed the IPRs. Uniloc
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`2017 LLC v. Samsung Elecs. Am., Inc., No. 2:19–CV–00259, 2020 WL 1433960, at *4, *6 (E.D.
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`Tex. Mar. 24, 2020). That scenario does not exist here. Unlike in the IPR setting, no statutory
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`estoppel attaches to TI as a result of TI’s summary judgment motion. Thus, Plaintiff cannot suffer
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`a disadvantage based on a perceived lack of statutory estoppel that does not exist.
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`Plaintiff also ignores that the Uniloc 2017 court found that the non–party IPRs implicated
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`example, Plaintiff’s opening claim construction brief was to be filed the day after the post-
`extension deadline for Plaintiff’s opposition to the stay motion (rather than eight days later absent
`the extension) (Opp. 5–6, 9).
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`4
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`EX1030, Page 7
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 8 of 11 PageID #: 2463
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`only eight of 19 asserted claims, such that even successful IPRs would not dispose of all—or even
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`a majority of—the asserted claims. Uniloc 2017¸ 2020 WL 1433960, at *2, 6. In stark contrast,
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`an invalidity determination as a result of TI’s motion for summary judgment would dispose of this
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`case entirely because TI’s motion implicates all of the same asserted patents and claims.
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`Under the second Ericsson factor, Plaintiff argues that absent estoppel there will be no
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`simplification of the issues. Opp. 11. That is plainly incorrect. If the Court grants TI’s motion
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`for summary judgment and finds the asserted claims invalid, Plaintiff’s cause of action becomes
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`moot, and this case similarly disappears pending any appeal. Ameranth, Inc. v. Par Tech. Corp.,
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`No. 2:10–CV–294, 2011 WL 4370539, at *1–2 (E.D. Tex. Aug. 16, 2011), report and
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`recommendation adopted, 2011 WL 4369449 (E.D. Tex. Sept. 19, 2011) (dismissing causes of
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`action based on claims which were found invalid in a separate litigation).
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`Under the third Ericsson factor, Plaintiff argues that an immediate stay is unwarranted
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`because Defendants’ stay motion was filed after the P.R. 4-3 statement and because the parties—
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`due to Plaintiff’s refusal to agree to stay the case on May 14 when the TI Case was stayed—are
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`now “in the midst of claim construction.” Opp. 11. But the Court has already found that the
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`asserted patents’ validity “can be resolved without the need for further discovery or claim
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`construction.” TI Case, Dkt. No. 68 at 2 (emphases added).3 Accordingly, there is no reason to
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`complete claim construction briefing before a stay.
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`III. CONCLUSION
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`For the reasons set forth above, Defendants respectfully submit that their motion to stay
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`should be granted.
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`3 Promethean Insulation Tech. LLC v. Sealed Air Corp., 2:13–CV–1113, Dkt. No. 222 (E.D. Tex.)
`(see Opp. 11–12) is not analogous. In that case, some of the defendants opposed another subset
`of the defendants’ motion to stay, and the Court relied on differences among the legal theories that
`applied to the various defendants, among other reasons, to deny the stay.
`5
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`EX1030, Page 8
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 9 of 11 PageID #: 2464
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`Dated: June 17, 2024
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`By:
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`/s/ Cosmin Maier (with permission of Collin
`Maloney)
`
`Otis Carroll
`Collin Maloney
`Mandy Nelson
`CARROLL MALONEY
`HENRY & NELSON PPLC
`1327 Dominion Plaza Ste. 100
`Tyler, TX 75703
`Tel: (903) 561–1600
`otis@cmhnlaw.com
`collin@cmhnlaw.com
`mandy@cmhnlaw.com
`
`John Desmarais (Admitted Pro Hac Vice)
`Paul Bondor (Admitted Pro Hac Vice)
`Cosmin Maier (Admitted Pro Hac Vice)
`Yung–Hoon Ha (Admitted Pro Hac Vice)
`Taeg Sang Cho (Admitted Pro Hac Vice)
`Jamie Kringstein (Admitted Pro Hac Vice)
`Alexander Walker (Admitted Pro Hac Vice)
`DESMARAIS LLP
`230 Park Avenue
`New York, New York 10169
`Tel: (212) 351–3400
`Fax: (212) 351–3401
`jdesmarais@desmaraisllp.com
`pbondor@desmaraisllp.com
`cmaier@desmaraisllp.com
`yha@desmaraisllp.com
`tcho@desmaraisllp.com
`jkringstein@desmaraisllp.com
`lwalker@desmaraisllp.com
`
`David Cho (Admitted Pro Hac Vice)
`Paxton Lewis (Admitted Pro Hac Vice)
`DESMARAIS LLP
`1899 Pennsylvania Avenue, NW, Suite 400
`Washington, DC 200069
`Tel: (202) 451–4900
`Fax: (202) 451–4901
`dcho@desmaraisllp.com
`plewis@desmaraisllp.com
`
`Kyle Curry (Admitted Pro Hac Vice)
`Kurt Fredrickson (Admitted Pro Hac Vice)
`kcurry@desmaraisllp.com
`kfredrickson@desmaraisllp.com
`DESMARAIS LLP
`101 California St., Suite 3000
`San Francisco, CA 94111
`(415) 573–1900
`
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`6
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`EX1030, Page 9
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 10 of 11 PageID #: 2465
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`Attorneys for Defendants Samsung Electronics
`Co. Ltd., Samsung Electronics America, Inc.,
`Samsung Semiconductor, Inc., and Samsung
`Austin Semiconductor LLC
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`7
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`EX1030, Page 10
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`Case 4:23-cv-00752-SDJ Document 67 Filed 06/17/24 Page 11 of 11 PageID #: 2466
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that on June 17, 2024, I electronically filed the foregoing with the Clerk
`of the Court using the CM/ECF system, which will send notification of such filing to all counsel
`of record.
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`/s/ Collin Maloney
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`8
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`EX1030, Page 11
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`Case 4:23-cv-00752-SDJ Document 67-1 Filed 06/17/24 Page 1 of 3 PageID #: 2467
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`EX1030, Page 12
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`Case 4:23-cv-00752-SDJ Document 67-1 Filed 06/17/24 Page 2 of 3 PageID #: 2468
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`EX1030, Page 13
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`Case 4:23-cv-00752-SDJ Document 67-1 Filed 06/17/24 Page 3 of 3 PageID #: 2469
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`EX1030, Page 14
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