Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 1 of 16 PageID #: 2194
`
`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.
`
`Civil Action No. 4:23-cv-752-SDJ
`
`JURY TRIAL DEMANDED
`
`
`PLAINTIFF DR. CHIEN-MIN SUNG’S OPPOSITION TO DEFENDANTS’
`MOTION TO STAY PENDING RESOLUTION OF
`TI’S MOTION FOR SUMMARY JUDGMENT
`
`Alex Chan (Texas State Bar No. 24108051)
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
`
`DATED:
`
`June 11, 2024
`
`IPR2024-00534
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1036
`Ex. 1036, Page 1
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 2 of 16 PageID #: 2195
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`
`
`TABLE OF CONTENTS
`
`Introduction ............................................................................................................................. 1
`I.
`Additional Background ....................................................................................................... 2
`II.
`Legal Standards ................................................................................................................... 3
`III.
`Argument ............................................................................................................................ 5
`IV.
`A. The Mere Possibility that TI’s MSJ Could Result in a Finding of Invalidity in Another
`Case Does Not Show Good Cause for a Stay Here. ................................................................... 6
`1. Samsung’s Purported Undue Burden Is Contrary to this District’s Case Precedent and
`Undermined by Its Ongoing Discovery .................................................................................. 7
`B. The Ericsson Factors Do Not Favor Samsung .................................................................... 8
`1. Samsung’s Requested Stay Will Create at Least a Tactical Disadvantage for Dr. Sung 9
`2. Not Only is Samsung’s Requested Stay Hardly Certain to Simplify the Issues, It May
`Duplicate Them If Dr. Sung Prevails .................................................................................... 11
`3. A Stay Is Not Warranted in the Midst of Claim Construction Briefing ....................... 11
`V. Conclusion ............................................................................................................................ 12
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`EX1036, Page 2
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 3 of 16 PageID #: 2196
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`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Advanced Mktg. Sys., LLC v. CVS Pharmacy, Inc.,
`No. 6:15-cv-134-JRG-KNM, Dkt. No. 61 (E.D. Tex. Sep. 3, 2015) ...................................... 3, 7
`
`Cellular Communs. Equip., LLC v. Samsung Elecs. Co., No. 6:14-cv-759-JRG-KNM,
`2015 U.S. Dist. LEXIS 179517, at *8 (E.D. Tex. Dec. 16, 2015) .............................................. 3
`
`Clear Imaging Rsch., LLC v. Samsung Elecs. Co., Ltd.,
`No. 2:19-cv-00326-JRG, 2020 U.S. Dist. LEXIS 272527 (E.D. Tex. Dec. 18, 2020) ............... 4
`
`Cywee Grp. Ltd. v. Samsung Elecs. Co.,
`No. 2:17-CV-00140-WCB-RSP, 2019 U.S. Dist. LEXIS 144149 (E.D. Tex. Feb. 14, 2019) ... 9
`
`Danco, Inc. v. Fluidmaster, Inc.,
`No. 5:16-cv-73-JRG-CMC, Dkt. No. 69, slip op. at 1, (E.D. Tex. June 6, 2017) ...................... 3
`
`GHJ Holdings, Inc. v. Plasticade Prods. Corp., No. 5:10-cv-220, Dkt. No. 29
`(E.D. Tex. May 31, 2011) ........................................................................................................... 8
`
`Glob. Equity Mgmt. (SA) Pty. Ltd. v. Ericsson, Inc.,
`No. 2:16-CV-00618, 2017 WL 365398 (E.D. Tex. Jan. 25, 2017)............................................. 4
`
`H&R Block Tax Servs. v. Jackson Hewitt Tax Serv.,
`No. 6:09-cv-37-JDL, Dkt. No. 66 (E.D. Tex. April 14, 2009) ............................................... 3, 8
`
`Landis v. N. Am. Co., 299 U.S. 248 (1936) .................................................................................... 3
`
`Promethean Insulation Tech. LLC v. Sealed Air Corp.,
`No. 2:13-cv-1113-JRG-RSP, Dkt. No. 222 (E.D. Tex. July 22, 2015) ...................................... 5
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`No. 2:13-cv-213-JRG-RSP, 2015 U.S. Dist. LEXIS 20303 (E.D. Tex. Jan. 29, 2015).............. 4
`
`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No. 2:19-cv-00259-JRG-RSP, 2020 U.S. Dist.
`LEXIS 50354 (E.D. Tex. Mar. 24, 2020) ................................................................... 4, 9, 10, 11
`
`Uniloc USA v. Avaya,
`No. 6:15-cv-1168-JRG, 2017 U.S. Dist. LEXIS 168855 (E.D. Tex. Apr. 19, 2017) ................. 4
`
`Uniloc USA, Inc., v. Kakao Corp.,
`No. 2:16-cv-576-JRG, Dkt. No. 31 (E.D. Tex. Dec. 29, 2016) .............................................. 3, 7
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)................................................................................................... 4
`ii
`
`EX1036, Page 3
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 4 of 16 PageID #: 2197
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`Plaintiff Dr. Chien-Min Sung respectfully submits this Opposition to Defendants
`
`Samsung Electronics Co., Ltd.’s (“SEC”), Samsung Electronics America, Inc.’s (“SEA”),
`
`Samsung Semiconductor, Inc.’s (“SSI”), and Samsung Austin Semiconductor, LLC’s (“SAS”)
`
`(collectively, “Samsung”) Motion to Stay Pending Resolution of TI’s Motion for Summary
`
`Judgment. (“Motion”; Dkt. No. 56). For the reasons set forth below, the Court should deny
`
`Samsung’s Motion.
`
`I.
`
`INTRODUCTION
`
`Samsung has requested that this Court take the highly unusual step of staying the instant
`
`proceedings in their entirety based on an unrelated party’s dispositive motion in a separate case
`
`where no estoppel from that result would apply to Samsung here. (Dkt. No. 56.)
`
`Notwithstanding the unfair tactical advantage that Samsung would gain thereby, Dr. Sung
`
`offered a proposal, which Samsung rejected, that this case be stayed once the parties have
`
`completed their P.R. 4-5 claim construction briefing that is already underway. (See Dkt. No. 56-
`
`7 at 2; see also Dkt. No. 37 at 2 (setting P.R. 4-5 dates).) Samsung conceded in its Motion that
`
`there is “some merit” to that “convenient stopping point for the case.” (Dkt. No. 56 at 12.) But
`
`to avoid “the expense of completing Markman briefing” and a few more weeks of discovery,1
`
`Samsung has chosen instead to seek an immediate halt to everything in this case. (Id. at 12–13.)
`
` 
`1 While Samsung’s briefing complains about the breadth and scope of Dr. Sung’s discovery
`requests and the purported burden of “proceeding through burdensome discovery” if its
`requested stay is not granted (Dkt. 56 at 8–9, 12), Samsung did not identify discovery burdens as
`an issue during the meet-and-confer process, and only raised “avoid[ing] unnecessary expenses
`by not having to go through the full Markman briefing process” in yet-another violation of
`L.R. CV-7(h). (See Dkt. 35 (order striking Samsung’s Motion for Inter-District Transfer for
`violating L.R. CV-7(h)); see also Dkt. 56-7 at 1 (emphasis added).) Tellingly, Samsung did not
`raise any issues concerning responding to already-issued discovery during the meet-and-confer
`process or at any point prior to filing its Motion, never even requested any extensions for its
`responses to Dr. Sung’s discovery requests, and in fact, has issued substantial party and third-
`party discovery of its own throughout this case, including during the last few weeks and as
`recently as today. See Section IV(A)(1) infra; see also Chan Decl. at ¶ 9 & Ex. 7. Moreover,
` 
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`1
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`EX1036, Page 4
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 5 of 16 PageID #: 2198
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`In effect, Samsung seeks to evade its P.R. 4-5(b) obligation to prepare and file its
`
`Responsive Claim Construction brief three weeks after Dr. Sung files his opening claim
`
`construction brief tomorrow. Because this would extend an unfair tactical advantage to Samsung
`
`and would not be certain to simplify anything in this case, Samsung has failed to show good
`
`cause for the stay it seeks. Accordingly, the Court should deny Samsung’s Motion and allow the
`
`parties to complete their claim construction briefing on July 17, 2024 before considering
`
`Samsung’s Motion or entering a stay of this matter pending resolution of Texas Instruments
`
`Inc.’s (“TI”) Motion for Summary Judgment (“MSJ”).
`
`II.
`
`ADDITIONAL BACKGROUND
`
`Despite Samsung’s efforts to dispose of this case (Dkt. No. 19) and move this case to the
`
`Northern District of California (Dkt. No. 38), discovery is well underway and has been ongoing
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`for over four months. (See Dkt. No. 34.) Both parties have served substantial discovery, with
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`Samsung having served more than 17 subpoenas on third parties over the past several months
`
`(and the 18th subpoena today) and produced substantial amounts of responsive documents within
`
`the last two weeks, including third-party documents received from the subpoenaed third parties.
`
`See Chan. Decl. at ¶ 9 & Ex. 7. Claim construction discovery has already been completed, and
`
`claim construction briefing is well underway, with Dr. Sung’s P.R. 4-5(a) opening claim
`
`construction brief being due tomorrow. (Dkt. No. 37.)
`
`Based on the current schedule, Samsung’s responsive claim construction brief is due on
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`July 3, 2024, and Dr. Sung’s reply claim construction brief is due on July 17, 2024. When
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`approached by Samsung regarding its Motion, Dr. Sung offered a proposal, which Samsung
`
` 
`Samsung’s Motion is an inappropriate vehicle to raise (let alone seek to adjudicate sub rosa) the
`scope and specificity of Dr. Sung’s discovery requests outside of the normal procedures for
`resolving such disputes outside the Federal Rules of Civil Procedure and this Court’s Local
`Rules.
`
`2
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`EX1036, Page 5
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 6 of 16 PageID #: 2199
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`rejected, to stay all deadlines pending resolution of TI’s MSJ once his reply claim construction
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`brief has been filed. (Dkt. 56-7 at 2.)
`
`III. LEGAL STANDARDS
`
`A party seeking a stay bears the burden of showing that the stay is appropriate. Cellular
`
`Communs. Equip., LLC v. Samsung Elecs. Co., No. 6:14-cv-759-JRG-KNM, 2015 U.S. Dist.
`
`LEXIS 179517, at *8 (E.D. Tex. Dec. 16, 2015) (citing Landis v. N. Am. Co., 299 U.S. 248, 255
`
`(1936)). Even when it is the party that has filed a dispositive motion who seeks a stay on that
`
`basis,“[i]t is not the Court’s policy to stay actions pending decisions on potentially dispositive
`
`motions.” Danco, Inc. v. Fluidmaster, Inc., No. 5:16-cv-73-JRG-CMC, Dkt. No. 69, slip op. at
`
`1, (E.D. Tex. June 6, 2017). That is because the mere fact that such a motion has been filed does
`
`not allow the court to “determine the ultimate merits” of that motion. See H&R Block Tax Servs.
`
`v. Jackson Hewitt Tax Serv., No. 6:09-cv-37-JDL, Dkt. No. 66, slip op. at 1–2 (E.D. Tex. April
`
`14, 2009) (denying defendant’s opposed motion to stay proceedings pending its own motion for
`
`summary judgment of invalidity).
`
`Even if reducing the need for future discovery may provide good cause for a stay, “the
`
`costs associated with adhering to routine discovery obligations do not uniformly impose an
`
`undue burden on the parties.” Uniloc USA, Inc., v. Kakao Corp., No. 2:16-cv-576-JRG, Dkt. No.
`
`31, slip op. at 2 (E.D. Tex. Dec. 29, 2016). In this judicial district, “[a] stay is not justified
`
`merely because a party desires to save money.” Advanced Mktg. Sys., LLC v. CVS Pharmacy,
`
`Inc., No. 6:15-cv-134-JRG-KNM, Dkt. No. 61 at 1 n.1 (E.D. Tex. Sep. 3, 2015).
`
`In considering the propriety of a motion to stay pending another proceeding’s resolution
`
`of a challenge to the validity of a patent, courts in this judicial district “usually consider three
`
`factors: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the
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`nonmoving party; (2) whether a stay will simplify the issues in question and trial of the case; and
`
`3
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`EX1036, Page 6
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 7 of 16 PageID #: 2200
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`(3) whether discovery is complete and whether a trial date has been set.” Rembrandt Wireless
`
`Techs., LP v. Samsung Elecs. Co., No. 2:13-cv-213-JRG-RSP, 2015 U.S. Dist. LEXIS 20303, at
`
`*7 (E.D. Tex. Jan. 29, 2015) (emphases added); see 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) (same
`
`factors).
`
`On the first factor, patentee’s right to timely enforcement of its patent right is entitled to
`
`weight, and a delay in enforcement “would certainly be prejudic[ial]” even if that consideration
`
`is not dispositive. See Clear Imaging Rsch., LLC v. Samsung Elecs. Co., Ltd., No. 2:19-cv-
`
`00326-JRG, 2020 U.S. Dist. LEXIS 272527, at *3 (E.D. Tex. Dec. 18, 2020). Likewise, courts
`
`in this judicial district recognize that a stay based on other proceedings can impose a tactical
`
`disadvantage on the non-movant when no estoppel applies to the party seeking a stay. Uniloc
`
`2017 LLC v. Samsung Elecs. Am., Inc., No. 2:19-cv-00259-JRG-RSP, 2020 U.S. Dist. LEXIS
`
`50354, at *16 & n.5 (E.D. Tex. Mar. 24, 2020) (denying Samsung’s request for a stay in view of
`
`third-party IPR proceedings).
`
`A lack of estoppel from third-party proceedings is also relevant to the second factor,
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`simplification of the issues. When no estoppel from the third-party proceedings applies to the
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`party seeking a stay, that party can relitigate the same issues should an unfavorable decision be
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`reached, which negate many of the benefits a stay could otherwise provide. See id. at *16, n.5.
`
`Without estoppel, simplification from a stay is hardly certain, and only a mere possibility.
`
` On the third factor, “the filing date of the motion is the proper time to measure the stage
`
`of litigation.” Uniloc USA v. Avaya, No. 6:15-cv-1168-JRG, 2017 U.S. Dist. LEXIS 168855, at
`
`*8 (E.D. Tex. Apr. 19, 2017) (citing VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307,
`
`1316 (Fed. Cir. 2014)). In this judicial district, the timing weighs against granting a stay when
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`the claim construction process has already begun. See Promethean Insulation Tech. LLC v.
`
`4
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`EX1036, Page 7
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 8 of 16 PageID #: 2201
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`Sealed Air Corp., No. 2:13-cv-1113, Dkt. No. 222, slip op. at 5 (E.D. Tex. July 22, 2015)
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`(“Indeed, by the date of the filing on the instant motion, the claim construction process had
`
`already begun as between the parties. This weighs against granting a stay.” (internal citations
`
`omitted)).
`
`IV. ARGUMENT
`
`Especially in view of Dr. Sung having already agreed to stay these proceedings on
`
`Samsung’s requested basis at the completion of claim construction briefing in less than six
`
`weeks, Samsung has not met its burden to show good cause for the stay it seeks here, and the
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`Ericsson factors do not favor Samsung. The parties should complete claim construction briefing,
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`and Samsung should resolve any issues with the scope of discovery in this case through meeting
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`and conferring, and if necessary, filing motions on those issues. Samsung’s desire to avoid a
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`round of briefing and to not respond to discovery (when it has not even requested any extension
`
`of time) hardly constitutes the good cause required to stay this case over Dr. Sung’s opposition.
`
`Moreover, the basis for Samsung’s requested stay would prejudice Dr. Sung by delaying
`
`his ability to vindicate his patent rights and tactically disadvantage him by potentially requiring
`
`him to relitigate the validity of the Asserted Patents should TI’s MSJ be decided in Dr. Sung’s
`
`favor. While ignoring the probability that Dr. Sung would likely appeal any adverse judgment
`
`that may issue, that potential re-litigation also makes Samsung’s purported simplification of the
`
`issues only a mere possibility—nothing prevents Samsung from raising those exact same
`
`arguments again here should Dr. Sung prevail against TI. Finally, the fact that the parties are in
`
`the middle of claim construction briefing—with (1) the P.R. 4-3 statement having been filed
`
`nearly a month ago; (2) the P.R. 4-4 claim construction discovery having been completed
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`including the deposition of both parties’ claim construction experts; and (3) Dr. Sung’s P.R. 4-
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`5
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`EX1036, Page 8
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 9 of 16 PageID #: 2202
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`5(a) opening claim construction brief being finalized for filing tomorrow—favors the parties
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`completing the briefing before the stay.
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`A.
`
`The Mere Possibility that TI’s MSJ Could Result in a Finding of Invalidity in
`Another Case Does Not Show Good Cause for a Stay Here.
`
`That TI has moved for summary judgment of invalidity does not support Samsung’s
`
`requested stay. All of Samsung’s cited precedent involves cases where the party seeking a stay
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`is the same party that has filed the dispositive motion on which the stay request is based. But
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`there is no pending dispositive motion regarding invalidity on the docket in this case. Tellingly,
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`Samsung cites no precedent (and Dr. Sung has been unable to locate any) in which a pending
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`dispositive motion in one litigation justifies a stay sought by a party in a separate litigation who
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`is not bound by the outcome. As discussed in more detail below, Samsung seeks to create a
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`“Heads, I win; Tails, I don’t lose” scenario over Dr. Sung’s opposition.
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`Even so, Dr. Sung was willing to agree to a stay, so long as the parties had completed the
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`claim construction briefing that had already begun when Samsung’s counsel first raised the issue
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`of the stay just over three weeks ago. (See Dkt. 56-7 at 2–3.) But that was not enough for
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`Samsung, who rejected that reasonable compromise to avoid what it characterized as the
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`“unnecessary expenses” of “having to go through the full Markman briefing process when the
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`asserted claims may subsequently be found invalid.” (Id.) While Samsung raised vague and
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`overgeneralized concerns about the scope of discovery, their Motion is not the proper vehicle to
`
`resolve any such dispute, especially when Samsung has not met-and-conferred regarding those
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`scope concerns or otherwise requested any extensions of time to respond to already propounded
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`discovery.
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`6
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`EX1036, Page 9
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 10 of 16 PageID #: 2203
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`1.
`
`Samsung’s Purported Undue Burden Is Contrary to this District’s
`Case Precedent and Undermined by Its Ongoing Discovery
`
`Samsung’s argument that “further discovery will impose undue burden on the Samsung
`
`Defendants” (Dkt. 56 at 9) flies in the face of precedent in this judicial district. In the Eastern
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`District of Texas, “[a] stay is not justified merely because a party desires to save money.”
`
`Advanced Mktg. Sys., LLC v. CVS Pharmacy, Inc., No. 6:15-cv-134-JRG-KNM, Dkt. No. 61 at 1
`
`n.1 (E.D. Tex. Sep. 3, 2015). But “avoid[ing] unnecessary expenses by not having to go through
`
`the full Markman briefing process” was the only justification that Samsung offered during the
`
`meet-and-confer process. (Dkt. 56-7 at 2.) That basis is facially insufficient here.
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`And although Samsung did not raise any discovery concerns during the meet-and-confer
`
`process,2 Samsung contends for the first time that the nature of Dr. Sung’s discovery requests
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`somehow justifies a stay here. (Dkt. 56-7 at 8–9.) But again, “the costs associated with adhering
`
`to routine discovery obligations do not uniformly impose an undue burden on the parties.”
`
`Uniloc USA, Inc., v. Kakao Corp., No. 2:16-cv-576-JRG, Dkt. No. 31, slip op. at 2 (E.D. Tex.
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`Dec. 29, 2016). And responding to those requests is not only just such a routine discovery
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`obligation. Samsung has not only failed to identify anything about Dr. Sung’s requests that is
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`anything but “routine” and has belied its own characterizations by failing to resolve these issues
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`through the by even raising them with opposing counsel, let alone meeting-and-conferring by
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`raising them with opposing counsel, let alone meeting-and-conferring as required under L.R.
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`CV-7 in preparation for a potential motion under Fed. R. Civ. P. 26(c).
`
` 
`2 Although considering such complaints even implicitly in deciding Samsung’s motion would be
`both premature and procedurally improper. To the extent that Samsung has any such complaints
`about the scope or nature of Dr. Sung’s discovery requests, Samsung should seek to resolve them
`through standard procedures in the ordinary course of litigation. Samsung’s failure to do so
`speaks volumes here.
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`7
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`EX1036, Page 10
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`

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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 11 of 16 PageID #: 2204
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`Samsung’s complaints about the expense and effort of routine discovery does not justify
`
`a stay, especially when the merits of Samsung’s characterizations have not even been assessed.
`
`See H&R Block Tax Servs. v. Jackson Hewitt Tax Serv., No. 6:09-cv-37-JDL, Dkt. No. 66, slip
`
`op. at 1–2 (E.D. Tex. April 14, 2009) (denying defendant’s opposed motion to stay proceedings
`
`pending its own motion for summary judgment of invalidity because “[a]t this time, the Court
`
`cannot determine the ultimate merits of Jackson Hewitt’s Motion for Summary Judgment. Thus,
`
`the Court finds that Jackson Hewitt has not offered adequate justification for a stay of all
`
`proceedings.”); GHJ Holdings, Inc. v. Plasticade Prods. Corp., No. 5:10-cv-220-DF, Dkt. No.
`
`29 (E.D. Tex. May 31, 2011) (denying motion to stay where defendant argued it would be forced
`
`to “enter into the costly—and in the instant case, one sided—discovery ordeal”).
`
`Critically, as recent as today, Samsung has served another set of third-party subpoenas—
`
`its 18th subpoena Samsung has served to date in this litigation. (See Chan Decl. at ¶ 9 & Ex. 7.)
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`Samsung cannot have its cake and eat it too by arguing, on the one hand, that “further discovery
`
`will impose undue burden on the Samsung Defendants without affecting the resolution of TI’s
`
`Motion for Summary Judgment” and, on the other hand, expanding the scope of discovery in this
`
`litigation by serving yet another third-party subpoena. Simply put, Samsung cannot have it both
`
`ways.
`
`B.
`
`The Ericsson Factors Do Not Favor Samsung
`
`Even if the Court were to consider the Ericsson factors in a request brought by a party
`
`uninvolved with (and not bound by) the proceedings on which the stay request is premised, those
`
`factors do not favor Samsung here. Again, especially when Dr. Sung has reasonably requested
`
`only that Samsung agree to complete the claim construction briefing already underway before
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`the case is stayed, Samsung’s request should be denied. Samsung’s desire to slam on the brakes
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`8
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`EX1036, Page 11
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 12 of 16 PageID #: 2205
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`in the middle of claim construction to the disadvantage of Dr. Sung and without any guarantee of
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`simplification of the issues does not support a stay here, and Samsung offers nothing more.
`
`1.
`
`Samsung’s Requested Stay Will Create at Least a Tactical
`Disadvantage for Dr. Sung
`
`Both parties have already served their respective expert declaration and deposed the other
`
`party’s claim construction expert. By tomorrow, Dr. Sung also will have already filed his
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`opening claim construction brief pursuant to P.R. 4-5(a). Even if Samsung were to obtain the
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`stay it requested over Dr. Sung’s opposition, it is unlikely that such an order would issue prior to
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`the filing of Dr. Sung’s opening claim construction brief (and in any event, the expense of
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`preparing that briefing has already been incurred by Dr. Sung). Staying the proceedings as
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`Samsung has now requested would effectively allot to Samsung far more than the three-week
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`response time for Samsung’s responsive claim construction brief allowed under P.R. 4-5(b) when
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`the stay lifts, but Dr. Sung will again only have two weeks to prepare his reply brief. This is just
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`one of the tactical disadvantages that would be produced by Samsung’s requested stay, if
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`granted.
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`In addition, Samsung’s requested stay will create another tactical disadvantage for Dr.
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`Sung should Dr. Sung prevail on TI’s MSJ. Unlike some other cases where Samsung has sought
`
`a stay based on separate proceedings,3 there is no estoppel from the outcome of those
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`proceedings that would apply to Samsung here or bind it in any way. No statute or case
`
`precedent prevents Samsung from relitigating the exact same issues in the Texas Instruments
`
`case, using the exact same arguments, even if the outcome favors Dr. Sung.
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`Given its extensive history of patent litigation in the Eastern District of Texas, Samsung
`
`should know better. Tellingly—and not for the first time in seeking such a stay in the Eastern
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`3 E.g., Cywee Grp. Ltd. v. Samsung Elecs. Co., No. 2:17-CV-00140-WCB-RSP, 2019 U.S. Dist.
`LEXIS 144149, at *27 & n.4 (E.D. Tex. Feb. 14, 2019).
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`9
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`EX1036, Page 12
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 13 of 16 PageID #: 2206
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`District of Texas—Samsung did not even commit to be bound by the results of the proceedings
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`on which it bases its request to stay the instant case. Samsung also attempted that “Heads, I win;
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`tails, I don’t lose” maneuver in Uniloc 2017 where the Court rightly rejected Samsung’s attempt
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`to get a stay based on third-party proceedings that could only benefit Samsung without any
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`possible downside. No. 2:19-cv-00259-JRG-RSP, 2020 U.S. Dist. LEXIS 50354 (E.D. Tex.
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`Mar. 24, 2020). In Uniloc 2017, “Samsung never agree[d] to be estopped by decisions reached
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`in those [third-party IPR] proceedings,” and instead merely stated that it filed a petition seeking
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`joinder to one IPR proceeding and that it would be filing a motion for joinder to another. Id. at
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`*16. The Court elaborated that while it “is confident that Samsung would agree with a favorable
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`result, it is more worried that Samsung would attempt to relitigate the same issues should a
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`decision unfavorable to Samsung be reached in the IPRs since Samsung never committed to be
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`estopped.” Id. at *16, n.5. In that same vein, nothing binds Samsung here.
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`Those concerns about a duplicative relitigation are equally applicable here if Samsung’s
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`Motion were granted over Dr. Sung’s opposition.4 Samsung could benefit from the resolution of
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`TI’s MSJ of invalidity, in that Dr. Sung’s patents would be invalidated (subject to appeal) in
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`every case. See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 349–50 (1971).
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`But if Dr. Sung prevails against TI, there is nothing that would stop Samsung from relitigating
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`invalidity in this case on any grounds—even using the exact same arguments word-for-word on
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`which Dr. Sung had already prevailed. The possibility that Samsung would seek to force its
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`opponent to relitigate the same issue, as it had done in Uniloc 2017, is precisely the sort of
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`resultant tactical disadvantage to the non-movant that warrants denial of the requested stay.
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`4 Although Dr. Sung has already agreed in principle to stay these proceedings following the
`completion of claim construction briefing on July 17, Dr. Sung requests that any such order that
`this Court may issue in the future staying these proceedings in view of the pending summary
`judgment motion in the TI matter estop Samsung at least from arguing invalidity on the grounds
`advanced by Texas Instruments in that motion for summary judgment.
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`10
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`EX1036, Page 13
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 14 of 16 PageID #: 2207
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`2.
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`Not Only is Samsung’s Requested Stay Hardly Certain to Simplify the
`Issues, It May Duplicate Them If Dr. Sung Prevails
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`Uniloc 2017 also applies to the second Ericsson factor. The issue, again, is that
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`Samsung’s contentions regarding simplification of the issues assume that Dr. Sung will not
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`prevail. Even ignoring the fact that such a ruling would not be the last word, as Dr. Sung would
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`likely appeal any adverse ruling on the validity of his patents that might result in the TI matter,
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`Samsung fails to account for or even consider what could occur if TI loses its MSJ. As in Uniloc
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`2017, Samsung would likely take another bite at the same apple, seeking to relitigate the
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`invalidity argument on which it is so confident that TI will prevail against Dr. Sung. In Uniloc
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`2017, the court rejected Samsung’s requested stay because the lack of estoppel “d[id] not provide
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`enough assurances to the Court to prove that the stay pending the [third-party proceedings],
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`without more, would help simplify issues in this case.” 2020 U.S. Dist. LEXIS 50354, at *16.
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`“This additional litigation would negate many of the benefits Samsung argues the stay would
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`provide” regarding simplification. Id. at *16, n.5.
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`3.
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`A Stay Is Not Warranted in the Midst of Claim Construction Briefing
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`The pacing of this case relative to that of the TI case is of limited (if any) relevance to
`
`this Ericsson factor. Rather, “when considering a motion to stay, the filing date of the motion is
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`the proper time to measure the stage of litigation.” Avaya, 2017 U.S. Dist. LEXIS 168855, at *8
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`(citing VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1316 (Fed. Cir. 2014)). Here,
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`the filing date of the motion was May 21, 2024—nearly a week after the P.R. 4-3 joint claim
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`construction statement and mere days before the close of claim construction discovery. (See Dkt.
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`37 at 2.)
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`The fact that the parties are in the midst of claim construction is reason enough to deny
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`Samsung’s requested stay. Promethean Insulation Tech. LLC v. Sealed Air Corp., No. 2:13-cv-
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`1113-JRG-RSP, Dkt. No. 222, slip op. at 5 (E.D. Tex. July 22, 2015) (“Indeed, by the date of
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`11
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`EX1036, Page 14
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 15 of 16 PageID #: 2208
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`the filing on the instant motion, the claim construction process had already begun as between the
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`parties. This weighs against granting a stay.” (emphasis added)). And that is why—as Dr.
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`Sung has already informed Samsung, and as Samsung has disclosed to the Court (see Dkt. No
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`56-7 at 2)—Dr. Sung has agreed to stay these proceedings once the claim construction briefing is
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`complete, less than six weeks from now. Samsung should complete preparation and filing of its
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`responsive claim construction brief on July 3, 2024, and Dr. Sung his reply brief on July 17,
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`2024, before any stay is entered by this Court. Dr. Sung is not opposed to staying these
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`proceedings at the right time, even prior to the Markman hearing, but believes that the proper
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`stopping point is at the completion of claim construction briefing—“a convenient stopping point
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`for the case” that even Samsung concedes has “certainly some merit.” (Dkt. 56 at 11.)
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`V.
`
`CONCLUSION
`
`For the reasons set forth above, Dr. Sung respectfully requests that this Court deny
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`Samsung’s motion to stay all proceedings in this case pending resolution of TI’s MSJ. While Dr.
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`Sung has agreed to stay of these proceedings once claim construction briefing has completed in
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`less than six weeks, any stay of these proceedings based on TI’s MSJ should also estop Samsung
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`from litigating invalidity on the grounds advanced in that motion.
`
`
`Dated: June 11, 2024
`
`
`/s/ Alex Chan
`Timothy Devlin (DE 4241)
`tdevlin@devlinlawfirm.com
`Alex Chan (Bar No. 24108051)
`achan@devlinlawfirm.com
`Neil A. Benchell (IL No. 6274550)
`nbenchell@devlinlawfirm.com
`Peter A. Mazur (DE No. 6732)
`pmazur@devlinlawfirm.com
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`
`Counsel for Plaintiff Chien-Min Sung
`12
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`EX1036, Page 15
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`Case 4:23-cv-00752-SDJ Document 62 Filed 06/11/24 Page 16 of 16 PageID #: 2209
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system on June 11, 2024
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`/s/ Alex Chan
`Alex Chan
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