Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 1 of 14 PageID #: 2128
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`CHIEN-MIN SUNG,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
`
`Defendants.
`
`Case No. 4:23-cv-752
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ MOTION TO STAY
`PENDING RESOLUTION OF TI’S MOTION FOR SUMMARY JUDGMENT
`
`
`
`IPR2024-00534
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1032
`Ex. 1032, Page 1
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`

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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 2 of 14 PageID #: 2129
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
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`BACKGROUND .................................................................................................................2
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`LEGAL STANDARD ..........................................................................................................3
`
`ARGUMENT .......................................................................................................................3
`
`A.
`
`There is good cause to stay this case because TI’s Motion for Summary
`Judgment can be resolved without further discovery or claim construction,
`and can completely dispose of both the TI Case and this case. ...............................3
`
`B.
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`Each of the Ericsson factors favors staying the case. ..............................................5
`
`1.
`
`2.
`
`3.
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`A stay of the case will not unduly prejudice Dr. Sung. ...............................5
`
`A stay will potentially dispose of the case, or at least simplify
`issues, due to the complete overlap of asserted claims. ...............................6
`
`A stay is warranted because of the early stage of the case—
`discovery is ongoing and no trial has been set. ............................................7
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`THE PARTIES’ MEET-AND-CONFER EFFORTS ..........................................................7
`
`CONCLUSION ....................................................................................................................8
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`
`
`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`i
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`EX1032, Page 2
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`

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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 3 of 14 PageID #: 2130
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Blonder–Tongue Labs., Inc. v. Univ. of Ill. Found.,
`402 U.S. 313 (1971) ...................................................................................................................4
`
`Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc.,
`No. 6:18-CV-30-JDK, 2019 WL 13335932 (E.D. Tex. Aug. 28, 2019) ...................................6
`
`Datatreasury Corp. v. Wells Fargo & Co.,
`490 F. Supp. 2d 749 (E.D. Tex. 2006) .......................................................................................3
`
`Fujita v. United States,
`416 F.App’x 400 (5th Cir. 2011) ...............................................................................................3
`
`Glob. Equity Mgmt. (SA) Pty. Ltd. v. Ericsson, Inc.,
`No. 2:16-CV-00618, 2017 WL 365398 (E.D. Tex. Jan. 25, 2017) .......................................3, 5
`
`James J. Flanagan Shipping Corp. v. Port of Beaumont of Jefferson Cty.,
`No. 1:20-CV-191, 2020 WL 4365595 (E.D. Tex. July 29, 2020) .............................................3
`
`Motion Games, LLC v. Nintendo Co.,
`No. 6:12-CV-878-JDL, (E.D. Tex. Sept. 23, 2014) ...................................................................4
`
`Peters v. Active Mfg. Co.,
`129 U.S. 530 (1889) ...................................................................................................................1
`
`Petrus v. Bowen,
`833 F.2d 581 (5th Cir. 1987) .....................................................................................................3
`
`Rapid Completions LLC v. Baker Hughes Inc.,
`No. 6:15-cv-724, 2016 WL 3079509 (E.D. Tex. June 1, 2016) ................................................6
`
`Reyes v. Equifax Info. Servs., LLC,
`No. 4:21-CV-639-SDJ, 2023 WL 3681684 (E.D. Tex. Apr. 13, 2023) .....................................4
`
`Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC,
`778 F.3d 1311 (Fed. Cir. 2015)..............................................................................................4, 7
`
`UMBRA Technologies Ltd., v. Cisco Systems, Inc.,
`No. 1:23-CV-903-DII, 2024 WL 2155274 (W.D. Tex. Apr. 25, 2024) ....................................6
`
`Statutes
`
`35 U.S.C. § 102(b) ...........................................................................................................................1
`
`ii
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`EX1032, Page 3
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 4 of 14 PageID #: 2131
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`TABLE OF AUTHORITIES (cont’d)
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`Pages
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`Rules
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`Federal Rule of Civil Procedure 26(c)(1) ....................................................................................... 3
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`
`
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`
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`iii
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`EX1032, Page 4
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 5 of 14 PageID #: 2132
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`
`
`I.
`
`INTRODUCTION
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`Defendants Samsung Electronics Co., Ltd. (“SEC”), Samsung Electronics America, Inc.
`
`(“SEA”), Samsung Semiconductor, Inc. (“SSI”), and Samsung Austin Semiconductor, LLC
`
`(“SAS”) (collectively, the “Samsung Defendants”) respectfully request that the Court stay this
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`litigation in its entirety pending resolution of Texas Instruments Incorporated’s (“TI”) Motion for
`
`Summary Judgment in a parallel action before this Court. (Civ. Action No. 4:23-cv-00753-SDJ
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`(“TI Case”), Dkt. No. 26).
`
`On May 14, 2024, this Court granted TI’s Motion to Stay the Case Pending Resolution of
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`TI’s Motion for Summary Judgment. (TI Case, Dkt. No. 68 (granting Dkt. No. 27)). TI’s Motion
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`for Summary Judgment demonstrates that pre-AIA 35 U.S.C. § 102(b)’s on-sale bar renders the
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`asserted claims of each of Dr. Sung’s patents invalid because Dr. Sung accused as infringing a
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`product that “was on sale before the critical dates of the asserted patents.” (TI Case, Dkt. No. 28
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`at 6-7). It is axiomatic “that which infringes, if later, would anticipate if earlier.” Peters v. Active
`
`Mfg. Co., 129 U.S. 530, 537 (1889). The Court found “good cause to grant a stay” in the TI Case
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`because TI’s Motion for Summary Judgment presented a “core question [] ripe for adjudication.”
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`(TI Case, Dkt. No. 68 at 2).
`
`The Samsung Defendants submit that the Court should also stay this case pending
`
`resolution of TI’s Motion for Summary Judgment. There is complete overlap between the patents
`
`and asserted claims implicated by TI’s Motion for Summary Judgment, on the one hand, and those
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`asserted by Dr. Sung against the Samsung Defendants, on the other. Thus, a determination of
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`invalidity based on TI’s Motion for Summary Judgment will have the same dispositive effect in
`
`this case. Because, like the TI Case, this case “can be resolved without the need for further
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`discovery or claim construction” (TI Case, Dkt. No. 68 at 2), there is good cause to stay the case.
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`
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`
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`EX1032, Page 5
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`

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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 6 of 14 PageID #: 2133
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`
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`II.
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`BACKGROUND
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`On August 21, 2023, Dr. Sung filed suit against the Samsung Defendants alleging
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`infringement of U.S. Patent Nos. 9,138,862 (“the ’862 patent”), 9,724,802 (“the ’802 patent”), and
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`8,974,270 (“the ’270 patent”). (Dkt. No. 1 ¶¶ 23-28). The asserted patents are directed to a
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`“common” semiconductor manufacturing technique known as “Chemical Mechanical Polishing
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`(CMP),” which uses a “polishing pad in combination with an abrasive slurry” to create smooth,
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`polished wafers. (See id. ¶¶ 29, 32). Dr. Sung alleges that the Samsung Defendants infringe the
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`asserted patents because they allegedly purchase and use certain “pad conditioners”—
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`manufactured by various third parties—to condition CMP pads that are used to polish wafers,
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`which are then incorporated into end-user products, such as mobile phones and home appliances.
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`(Id. ¶¶ 10–11).
`
`This case is still in its early stages. On November 27, 2023, Defendants filed a Motion to
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`Dismiss. (Dkt. No. 19). On February 22, 2024, Defendants filed a Motion to Transfer to the
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`Northern District of California. (Dkt. No. 38). Both of those motions are pending before this
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`Court.1 The bulk of discovery and other events in this case have yet to occur and key milestones
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`remain months away: the Markman hearing is scheduled for September 4, 2024; discovery will
`
`not close until February 2, 2025; final dispositive motions are due March 5, 2025; and the final
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`pretrial conference is set for September 5, 2025. (Dkt. No. 37). No trial date has been set. (Id.).
`
`
`1 The Samsung Defendants have also filed three petitions for Inter Partes Review, challenging the
`validity of all claims of the asserted patents. Samsung Electronics Co. Ltd. et al v. Chien-Min
`Sung, Case No. IPR2024-00533 (P.T.A.B. February 29, 2024) (challenging the ’270 patent); Case
`No. IPR2024-00534 (P.T.A.B. February 29, 2024) (challenging the ’862 patent); Case No.
`IPR2024-00535 (P.T.A.B. February 29, 2024) (challenging the ’802 patent). As the Samsung
`Defendants previously stated, the Samsung Defendants will also file a motion to stay this case if
`and when the Patent Trial and Appeal Board of the United States Patent and Trademark Office
`institutes the Samsung Defendants’ Inter Partes Reviews. (See Dkt. No. 43). Institution decisions
`are expected by September 28, 2024.
`
`
`
`2
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`EX1032, Page 6
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`

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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 7 of 14 PageID #: 2134
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`
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`III. LEGAL STANDARD
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`A federal district court has “broad discretion and inherent power to stay discovery until
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`preliminary questions that may dispose of the case are determined.” Fujita v. United States, 416
`
`F.App’x 400, 402 (5th Cir. 2011) (quoting Petrus v. Bowen, 833 F.2d 581, 583 (5th Cir. 1987)).
`
`The court may, for example, stay discovery for “good cause” under Federal Rule of Civil
`
`Procedure 26(c)(1). See id. Good cause may exist when “resolving a [dispositive motion] might
`
`reduce or preclude the need for discovery or when ‘further discovery will impose undue burden or
`
`expense without aiding the resolution of the dispositive motions.’” James J. Flanagan Shipping
`
`Corp. v. Port of Beaumont of Jefferson Cty., No. 1:20-CV-191, 2020 WL 4365595, at *1 (E.D.
`
`Tex. July 29, 2020) (quoting Fujita, 416 F.App’x at 402).
`
`Additionally, in considering a motion to stay, courts in this district may consider: “(1)
`
`whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving
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`party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether
`
`discovery is complete and whether a trial date has been set.” Glob. Equity Mgmt. (SA) Pty. Ltd. v.
`
`Ericsson, Inc., No. 2:16-CV-00618, 2017 WL 365398, at *10 (E.D. Tex. Jan. 25, 2017) (quoting
`
`Datatreasury Corp. v. Wells Fargo & Co., 490 F. Supp. 2d 749, 754 (E.D. Tex. 2006)).
`
`IV. ARGUMENT
`
`A.
`
`There is good cause to stay this case because TI’s Motion for Summary
`Judgment can be resolved without further discovery or claim construction,
`and can completely dispose of both the TI Case and this case.
`
`As the Court explained in the TI Case, “good cause [to stay] may exist when ‘resolving a
`
`[dispositive motion] might reduce or preclude the need for discovery or when further discovery
`
`will impose undue burden or expense without aiding the resolution of the dispositive motions.’”
`
`(TI Case, Dkt. No. 68 at 1) (quoting James J. Flanagan Shipping Corp., 2020 WL 4365595, at *1.
`
`Good cause exists here because TI’s Motion for Summary Judgment could dispose of both the TI
`
`
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`3
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`EX1032, Page 7
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 8 of 14 PageID #: 2135
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`
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`case and this case, where Dr. Sung asserts the same patents and claims, in their entirety under issue
`
`preclusion without the need for further discovery or claim construction. See Soverain Software
`
`LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1313–16 (Fed. Cir. 2015)
`
`(affirming invalidity of the asserted claims due to issue preclusion (citing Blonder–Tongue Labs.,
`
`Inc. v. Univ. of Ill. Found., 402 U.S. 313, 349–50 (1971)).
`
`As the Court already determined in the TI Case, the “core question” of invalidity presented
`
`by TI’s Motion for Summary Judgment “is ripe for adjudication and can be resolved without the
`
`need for further discovery or claim construction.” (TI Case, Dkt. No. 68 at 2). That holds equally
`
`true in Dr. Sung’s case against the Samsung Defendants. (Ex. 1, Motion Games, LLC v. Nintendo
`
`Co., No. 6:12-CV-878-JDL, D.I. 216 (E.D. Tex. Sept. 23, 2014) (ordering a stay to “eliminat[e]
`
`time-consuming and costly discovery which will likely have no effect on the merits of the case”));
`
`Reyes v. Equifax Info. Servs., LLC, No. 4:21-CV-639-SDJ, 2023 WL 3681684, at *1 (E.D. Tex.
`
`Apr. 13, 2023) (“[R]esolution of Equifax’s summary-judgment motion could obviate the need for
`
`trial, saving both parties considerable litigation expense, and Reyes’s allegations of prejudice
`
`stemming from the continued passage of time from her alleged injury to her ultimate trial testimony
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`fail to establish any meaningful competing interest counseling against a stay.”).
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`That this case can be disposed of without further discovery strongly supports a stay because
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`Dr. Sung has pursued unduly burdensome and unnecessary discovery. For example, Dr. Sung
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`seeks discovery relating to exceedingly broad categories of end user products, including “memory,
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`mobile devices (e.g., mobile phones), smart devices (e.g., smart watches), LED panels, solid-state
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`drives, processors, image sensors, virtual reality headsets, computing devices and tablets,
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`security/monitoring systems, TVs and displays, home appliances, audio systems and devices, and
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`other semiconductor system, products, devices, and integrated circuits” that are “design[ed],
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`
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`4
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`EX1032, Page 8
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 9 of 14 PageID #: 2136
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`
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`develop[ed], or manufacture[d] . . . us[ing] or employ[ing]” the identified third-party CMP pad
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`conditioners. (Dkt. No. 1 ¶¶ 11-12; see also Ex. 2 at ¶ AA (defining “Accused Products” as those
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`described in the Complaint)). Dr. Sung’s failure to identify accused products with specificity is
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`particularly unduly burdensome on the Samsung Defendants given the tenuous relationship
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`between the expansive set of accused end user products and the alleged inventions related to CMP
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`pad conditioners.
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`Moreover, Dr. Sung fails to tie the broad classes of accused products to any particular
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`Samsung Defendant. Dr. Sung does not differentiate between the four different named Samsung
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`entities under his various theories of infringement: (1) SEC (a Korean entity); (2) SEA (a New
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`York entity that does not purchase or use CMP pad conditioners); (3) SSI (a California entity that
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`does not purchase or use CMP pad conditioners); and (4) SAS (a Delaware entity). The Samsung
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`Defendants are left guessing, at considerable expense, as to what is responsive to Dr. Sung’s
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`sweeping discovery requests.
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`Because resolving TI’s Motion for Summary Judgment can obviate the need for discovery,
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`and further discovery will impose undue burden on the Samsung Defendants without affecting the
`
`resolution of TI’s Motion for Summary Judgment, the Samsung Defendants respectfully request
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`that the Court enter a stay in this case.
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`B.
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`Each of the Ericsson factors favors staying the case.
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`If the Court finds that there is good cause to stay this case—just as it did in the TI Case—
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`the Court need not consider the Ericsson 3-factor test. If the Court, however, reaches the Ericsson
`
`analysis, that test confirms that a stay is warranted in this case.
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`1.
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`A stay of the case will not unduly prejudice Dr. Sung.
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`The Court has already stayed the parallel TI Case, finding that it “can be resolved without
`
`the need for further discovery or claim construction.” (TI Case, Dkt. No. 68 at 2). Like in the TI
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`
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`5
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`EX1032, Page 9
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 10 of 14 PageID #: 2137
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`
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`Case, Dr. Sung faces no undue prejudice from an identical stay in this case. The lack of undue
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`prejudice is particularly apparent here because Dr. Sung: (1) seeks only monetary relief (see Dkt.
`
`No. 1 at 34-35; see also Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc., No. 6:18-CV-
`
`30-JDK, 2019 WL 13335932, at *2 (E.D. Tex. Aug. 28, 2019) (quoting Rapid Completions LLC
`
`v. Baker Hughes Inc., No. 6:15-cv-724, 2016 WL 3079509, at *2 (E.D. Tex. June 1, 2016))
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`(granting stay and explaining that “when a patentee seeks exclusively monetary damages, rather
`
`than a preliminary injunction or other relief, ‘mere delay in collecting those damages does not
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`constitute undue prejudice’”)); and (2) does not claim to practice the asserted patents or sell any
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`products and, accordingly, does not compete with the Samsung Defendants (see UMBRA
`
`Technologies Ltd., v. Cisco Systems, Inc., No. 1:23-CV-903-DII, 2024 WL 2155274, at *2 (W.D.
`
`Tex. Apr. 25, 2024) (holding that, because “the parties do not compete, a stay will not unduly
`
`prejudice [plaintiff’s] interests.”); see also Bell Semiconductor, LLC v. NXP Semiconductors,
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`N.V., No. 1:20-CV-611-LY, 2022 WL 1447948, at *2 (W.D. Tex. Feb. 7, 2022) (“Because Bell
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`Semic does not produce products on its patents or otherwise compete with NXP, a stay will not
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`unduly prejudice Bell Semic’s interests.”)).
`
`2.
`
`A stay will potentially dispose of the case, or at least simplify issues, due
`to the complete overlap of asserted claims.
`
`The patents and claims asserted in the TI Case completely subsume the patents and claims
`
`asserted here against the Samsung Defendants. In the TI Case, Dr. Sung asserts claims 1–13, 15,
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`17–20 of the ’862 patent; claims 1–21 of the ’802 patent; and claims 1–8 of the ’270 patent. (See
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`TI Case, Dkt. No. 28 at 3 (explaining that Dr. Sung asserts “’862 patent claims 1–13, 15, 17–20;
`
`’802 patent claims 1–21; and ’270 patent claims 1–8” against TI)). In this case, Dr. Sung likewise
`
`asserts the same set of claims in the ’862 and ’802 patents. (Dkt. No. 1 at ¶¶ 23-28; see also Ex.
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`
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`6
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`EX1032, Page 10
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 11 of 14 PageID #: 2138
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`
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`3 at 3 (asserting ’862 patent claims 1-13, 15, 17-20 and ’802 patent claims 1-21)).2 A finding of
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`invalidity in the TI Case would thus render all of Dr. Sung’s asserted claims in this case invalid.
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`Soverain Software LLC, 778 F.3d at 1313–16 (Fed. Cir. 2015).
`
`3.
`
`A stay is warranted because of the early stage of the case—discovery is
`ongoing and no trial has been set.
`
`Despite being filed on the same day as the TI Case, this case has advanced more slowly.
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`For example, the TI Case has already completed opening, responsive, and reply claim construction
`
`briefing. (See TI Case, Dkt. Nos. 57, 61, 65). In contrast, opening claim construction briefing in
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`this case is not scheduled to occur until June 12, 2024. (Dkt. No. 37). Similarly, although the final
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`pretrial conference in the TI Case is scheduled for February 3, 2025, (TI Case, Dkt. No. 12), the
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`final pretrial conference in this case is not scheduled until September 3, 2025—seven months later.
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`(Dkt. No. 37). The much earlier posture of this case as compared to the already-stayed TI Case
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`further favors a stay.
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`V.
`
`THE PARTIES’ MEET-AND-CONFER EFFORTS
`
`The Samsung Defendants requested a meet-and-confer concerning this Motion on May 14,
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`2024—the same day that the Court issued its order staying the TI Case. (Ex. 4). The parties then
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`conferred via teleconference on May 17, 2024. Dr. Sung’s counsel followed up by email on May
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`20, 2024, offering to agree to stay the case after claim construction briefing is complete (on July
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`17, 2024). (Ex. 5). There is certainly some merit to Dr. Sung’s proposal insofar as it would provide
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`a convenient stopping point for the case with Markman briefing being completed. Accordingly,
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`the Samsung Defendants are open to that approach if the Court deems it best. However, the
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`Samsung Defendants respectfully submit that the better approach is to stay the case sooner to avoid
`
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`2 Dr. Sung’s Preliminary Infringement Contentions dropped the ’270 patent, explaining “Plaintiff
`will no longer pursue infringement based on double-sided pad conditioners.” (Ex. 3 at n. 1).
`7
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`EX1032, Page 11
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 12 of 14 PageID #: 2139
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`
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`the expense of completing Markman briefing and proceeding through burdensome discovery while
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`the Court considers the validity of all asserted claims in both this case and the TI case. As the
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`Court found in the TI Case, “this core question [of invalidity] is ripe for adjudication and can be
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`resolved without the need for further discovery or claim construction.” (TI Case, Dkt. No. 68 at
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`2) (emphasis added).
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`VI. CONCLUSION
`
`For all the reasons set forth above, the Samsung Defendants respectfully request that the
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`Court grant this motion to stay the case pending resolution of TI’s Motion for Summary Judgment
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`as it has done in the TI Case.
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`8
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`EX1032, Page 12
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 13 of 14 PageID #: 2140
`
`/s/ Cosmin Maier (with permission, by 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)
`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
`
`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
`
`Attorneys for Defendants Samsung Electronics
`Co. Ltd., Samsung Electronics America, Inc.,
`Samsung Semiconductor, Inc., and Samsung
`Austin Semiconductor LLC
`
`
`
`
`Dated: May 21, 2024
`
`By:
`
`
`
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`9
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`EX1032, Page 13
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`Case 4:23-cv-00752-SDJ Document 56 Filed 05/21/24 Page 14 of 14 PageID #: 2141
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`
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`CERTIFICATE OF CONFERENCE
`
` I
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` hereby certify that counsel for Defendants has complied with the meet and confer
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`requirement set forth in Local Rule CV-7(h), and this motion is opposed. On May 17, 2024,
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`Defendants’ counsel—Cosmin Maier—met and conferred with Plaintiff’s counsel—Alex Chan—
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`on Defendants’ request to stay the case. Plaintiff’s counsel stated that he is agreeable to staying
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`the case after the parties have completed claim construction briefing, on or about July 17,
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`2024. Plaintiff’s counsel confirmed on May 20, 2024 that Plaintiff is not amenable to Defendants’
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`proposed immediate stay pending resolution of TI’s Motion for Summary Judgment.
`
`/s/ Cosmin Maier (with permission, by Collin Maloney)
`Cosmin Maier
`
`
`
`
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`CERTIFICATE OF SERVICE
`
` I
`
`
`
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` hereby certify that on May 21, 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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`
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`/s/ Collin Maloney
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`
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`10
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`EX1032, Page 14
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`

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`Case 4:23-cv-00752-SDJ Document 56-1 Filed 05/21/24 Page 1 of 1 PageID #: 2142
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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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`
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`
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`C.A. No. 4:23-cv-752-SDJ
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`
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`JURY TRIAL DEMANDED
`
`
`ORDER GRANTING DEFENDANTS’ MOTION TO STAY
`PENDING RESOLUTION OF TI’S MOTION FOR SUMMARY JUDGMENT
`
`BEFORE THE COURT is Defendants’ Motion to Stay Pending Resolution of Texas
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`Instruments Incorporated’s (“TI”) Motion for Summary Judgment, as well as the supporting
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`Declaration of Kyle Curry along with Exhibits 1–5 (together, “Motion”). The Court, having
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`considered the Motion, finds that it is meritorious and should be GRANTED.
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`
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`It is therefore ORDERED that any deadlines and hearings scheduled in this matter are
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`STAYED until resolution of TI’s Motion for Summary Judgment (Dkt. No. 26) in Civ. Action No.
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`4:23-cv-00753-SDJ.
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`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
`
`
`v.
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`Defendants.
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`
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`EX1032, Page 15
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`

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`
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`Civil Action No. 4:23-cv-00752
`
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`Defendants.
`
`v.
`
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC., and
`SAMSUNG AUSTIN SEMICONDUCTOR LLC,
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`
`
`
`
`
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`
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`Case 4:23-cv-00752-SDJ Document 56-2 Filed 05/21/24 Page 1 of 2 PageID #: 2143
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`IN THE UNITED STATES DISTRICT
`COURT FOR THE EASTERN DISTRICT
`OF TEXAS SHERMAN DIVISION
`
`
`
`CHIEN-MIN SUNG,
`
`
`DECLARATION OF KYLE CURRY
`IN SUPPORT OF DEFENDANTS’ MOTION TO STAY PENDING
`RESOLUTION OF TI’S MOTION FOR SUMMARY JUDGMENT
`
`I, Kyle Curry, declare as follows:
`
`1.
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`I am an associate with the law firm of Desmarais LLP, counsel for Samsung
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`Electronics Co., Ltd. (“SEC”), Samsung Electronics America, Inc. (“SEA”), Samsung
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`Semiconductor, Inc. (“SSI”), and Samsung Austin Semiconductor LLC (“SAS”) (collectively,
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`“Defendants”) in the above-captioned litigation. I am licensed to practice law in the State of
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`California and have been admitted pro hac vice to practice before this Court.
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`2.
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`I submit this Declaration in support of Defendants’ contemporaneously filed
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`Motion to Stay Pending Resolution of TI’s Motion for Summary Judgment.
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`3.
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`4.
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`The matters set forth herein are within my personal knowledge.
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`If sworn as a witness, I could and would competently testify regarding the matters
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`set forth herein.
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`5.
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`Attached hereto as Exhibit 1 is a true and correct copy of Docket Number 216 in
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`
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`Page 1 of 2
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`EX1032, Page 16
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`

`

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`Case 4:23-cv-00752-SDJ Document 56-2 Filed 05/21/24 Page 2 of 2 PageID #: 2144
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`Motion Games, LLC v. Nintendo Co., No. 6:12-CV-878-JDL (E.D. Tex. Sept. 23, 2014).
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`6.
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`Attached hereto as Exhibit 2 is a true and correct copy of a highlighted excerpt of
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`Plaintiff’s First Set of Interrogatories to Defendants (Nos. 1-12), dated January 18, 2024.
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`7.
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`Attached hereto as Exhibit 3 is a true and correct copy of highlighted excerpts of
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`Plaintiff Dr. Chien Min-Sung’s Preliminary Disclosure of Asserted Claims and Infringement
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`Contentions, dated February 21, 2024.
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`8.
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`Attached hereto as Exhibit 4 is a true and correct copy of counsel correspondence
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`between Cosmin Maier and Joel Glazer, dated May 14, 2024.
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`9.
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`Attached hereto as Exhibit 5 is a true and correct copy of counsel correspondence
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`between Cosmin Maier and Alex Chan, dated May 21, 2024.
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`
`
`
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`I declare under penalty of perjury under the laws of the United States that to the best of
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`my knowledge and recollection, the foregoing is true and correct.
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`
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`Executed this 21st day of May, 2024 in San Francisco. California.
`
`
`
`/s/ Kyle Curry
`Kyle Curry
`
`
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`Page 2 of 2
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`EX1032, Page 17
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`

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`Case 4:23-cv-00752-SDJ Document 56-3 Filed 05/21/24 Page 1 of 5 PageID #: 2145
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`EXHIBIT 1
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`
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`EX1032, Page 18
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`

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`Case 4:23-cv-00752-SDJ Document 56-3 Filed 05/21/24 Page 2 of 5 PageID #: 2146
`Case 6:12-cv-00878-JDL Document 216 Filed 09/23/14 Page 1 of 4 PageID #: 5906
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`MOTION GAMES, LLC
`Plaintiff,
`
`vs.
`
`NINTENDO CO., LTD.; et al.
`Defendants.
`
`§
`§
`§ Cause No. 6:12-cv-878-JDL
`§
`§ JURY TRIAL DEMANDED
`§
`
`
`§
`
`
`
`
`
`
`
`
`
`ORDER
`
`
`
`
`
`Before the Court is Defendants’1 Emergency Motion to Stay Proceedings and for
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`Protective Order (Doc. No. 203) (“MOTION”). Motion Games, LLC (“Motion Games”)
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`responded (Doc. No. 207) (“RESPONSE”). Defendants have asked the Court to stay all
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`proceedings, deadlines, and discovery obligations pending the Court’s ruling on (1) Defendants’
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`motion to sever, stay, and reconsider denial of venue transfer (Doc. No. 178); and (2)
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`Defendants’ motion to stay pending inter partes review. After considering the Motion and other
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`matters of record, the Court rules as follows:
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`1. The Court sua sponte ORDERS that discovery is stayed as to RAC and GameStop
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`(collectively the “Retailers”). “The power to stay proceedings is incidental to the power inherent
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`in every court to control the disposition of the causes on its docket with economy of time and
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`effort for itself, for counsel, for litigants.” Landis v. N Am. Co., 299 U.S. 248, 254 (1936); see
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`also Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983). The application of
`
`this power requires “the exercise of judgment, which must weigh competing interests and
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`maintain an even balance." Landis, 299 U.S. at 254-55. Courts evaluate three factors when
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`considering a motion to stay: “‘(1) whether a stay will unduly prejudice or present a clear tactical
`
`disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and
`
`1 The Defendants are Nintendo Co., Ltd. (“NCL”), Nintendo of America Inc. (“NOA”), Retro Studios, Inc.
`(“Retro”), Rent-A-Center, Inc. (“RAC”) and GameStop Corp. (“GameStop”) (collectively “Defendants”).
`
`EX1032, Page 19
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`

`

`Case 4:23-cv-00752-SDJ Document 56-3 Filed 05/21/24 Page 3 of 5 PageID #: 2147
`Case 6:12-cv-00878-JDL Document 216 Filed 09/23/14 Page 2 of 4 PageID #: 5907
`
`trial of the case; and (3) whether discovery is complete and whether a trial date has been set.’”
`
`Lodsys v. Brother Int'l Corp., No. 2:11-cv-90, 2013 U.S. Dist. LEXIS 51336, at *42 (E.D. Tex.
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`Jan. 14, 2013) (quoting Soverain Software LLC v. Amazon. com, Inc., 356 F. Supp. 2d 660, 662
`
`(E.D. Tex. Feb. 9, 2005)).
`
`First, a stay as to the Retailers will not prejudice Motion Games. Motion Games has a
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`recognized interest in the timely enforcement of its patent rights. Retailer defendants likely
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`possess little or no evidence regarding the underlying technology of the accused products, and
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`discovery as to the Retailers will not produce evidence regarding the substantive aspects of the
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`infringement case. See In re Nintendo Co., Ltd., 544 Fed. App’x 934, 940 (Fed. Cir. 2013). By
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`eliminating time-consuming and costly discovery which will likely have no effect on the merits
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`of the case, a stay will ensure that Motion Games’ interest in proceeding quickly to trial is
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`secure. As such, this factor weighs in favor of a stay.
`
`The second factor, whether a stay will simplify the issues in question and the trial of the
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`case, favors a stay. Motion Games argues that discovery against the Retailers is necessary
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`because the Retailers “sell non-Nintendo products that are accused of infringement” and
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`“engage[] in conduct that creates liability for infringement of at least the asserted method claims
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`of the patents-in-suit.” RESPONSE at 2. To that end, Motion Games has served broad discovery
`requests which are seemingly unconnected to the merits of the case.2 These broad requests are
`
`
`2 Motion Games’ original deposition notices requested inter alia:
`“Defendant’s email and data backup and restoration policies, practices, procedures, and schedules
`•
`(including media and software used and storage locations) during the last ten years.” (Doc. No. 203,
`Group Exhibit No. 2, Notice at No. 5)
`“Defendant’s employee computer use policies, practices, and procedure and the documents evidencing
`same during the last ten years.” Id. at No. 9.
`“The existence of and Defendant’s typical use of software and online applications which have any
`interaction with the Accused Instrumentalities, including but not limited to” o