`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`CHIEN-MIN SUNG
`
`v.
`
`TEXAS INSTRUMENTS
`INCORPRATED
`
`§
`§
`§ CIVIL NO. 4:23-CV-753-SDJ
`§
`§
`§
`
`ORDER
`Before the Court is Texas Instruments Incorporated’s (“TI”) Motion to Stay the
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`Case Pending Resolution of TI’s Motion for Summary Judgment. (Dkt. #27). Plaintiff
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`Chien-Min Sung filed a response in opposition, (Dkt. #35), TI filed a reply, (Dkt. #39),
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`and Sung filed a sur-reply, (Dkt. #46). Having considered the briefing and the
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`applicable law, the Court concludes that the motion should be granted.
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`A federal district court has “broad discretion and inherent power to stay
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`discovery until preliminary questions that may dispose of the case are determined.”
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`Fujita v. United States, 416 F.App’x 400, 402 (5th Cir. 2011) (quoting Petrus v. Bowen,
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`833 F.2d 581, 583 (5th Cir. 1987)). The court may, for example, stay discovery for
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`“good cause” under Federal Rule of Civil Procedure 26(c)(1). See id. Good cause may
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`exist when “resolving a [dispositive motion] might reduce or preclude the need for
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`discovery or when ‘further discovery will impose undue burden or expense without
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`aiding the resolution of the dispositive motions.’” James J. Flanagan Shipping
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`Corp. v. Port of Beaumont of Jefferson Cty., No. 1:20-CV-191, 2020 WL 4365595, at
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`*1 (E.D. Tex. July 29, 2020) (quoting Fujita, 416 F.App’x at 402). But as courts in this
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`circuit have often explained, a discovery stay is “the exception rather than the rule.”
`
`1
`
`IPR2024-00534
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1031
`Ex. 1031, Page 1
`
`
`
`Case 4:23-cv-00753-SDJ Document 68 Filed 05/14/24 Page 2 of 3 PageID #: 3269
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`Id., at *1 (quoting Yeti Coolers, LLC v. Magnum Solace, LLC, No. 1:16-CV-663-RP,
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`2016 WL 10571903, at *1 (W.D. Tex. Oct. 19, 2016)).
`
`The Court finds good cause to grant a stay. Under 35 U.S.C. § 102(b), a patent
`
`claim is invalid if it can be shown that the invention was “on sale in this country,
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`more than one year prior to the date of the application for the patent in the United
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`States.” Invoking § 102(b), known as the “on-sale” bar, TI’s motion for summary
`
`judgment asserts that this is the atypical case wherein the accused product was on
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`sale before the critical dates of the asserted patents. Under these circumstances,
`
`where the patentee has accused a prior art product of infringement, summary
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`judgment based on invalidity may be warranted if it can be shown that the accused
`
`product was on sale prior to the critical date. See, e.g., Evans Cooling Sys., Inc. v. Gen.
`
`Motors Corp., 125 F.3d 1448, 1451 (Fed. Cir. 1997); Vanmoor v. Wal-Mart Stores, Inc.,
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`201 F.3d 1363, 1366 (Fed. Cir. 2000). The Court concludes that this core question is
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`ripe for adjudication and can be resolved without the need for further discovery or
`
`claim construction.
`
`It is therefore ORDERED that TI’s Motion to Stay the Case Pending
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`Resolution of TI’s Motion for Summary Judgment, (Dkt. #27), is GRANTED.
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`It is further ORDERED that all proceedings in this case are STAYED pending
`
`the Court’s resolution of Defendant Texas Instruments’ Motion for Summary
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`Judgment of Invalidity. (Dkt. #26).
`
`
`
`
`
`
`
`2
`
`EX1031, Page 2
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`
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`Case 4:23-cv-00753-SDJ Document 68 Filed 05/14/24 Page 3 of 3 PageID #: 3270
`
`3
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`EX1031, Page 3
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`
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