Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 1 of 10 PageID #: 2601
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`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’S SUR-REPLY IN SUPPORT OF HIS 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 24, 2024
`
`IPR2024-00534
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1038
`Ex. 1038, Page 1
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`

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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 2 of 10 PageID #: 2602
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`TABLE OF CONTENTS
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`SAMSUNG’S REPLY STILL DOES NOT ESTABLISH GOOD CAUSE FOR STAYING
`I.
`THIS CASE IN THE MIDST OF MARKMAN BRIEFING ........................................................... 2
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`II. SAMSUNG HAS FAILED TO SHOW THAT THE ERICSSON FACTORS SUPPORT
`STAYING THIS CASE IN THE MIDST OF MARKMAN BRIEFING......................................... 3
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`III.
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`CONCLUSION .................................................................................................................... 5
`
`i
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`EX1038, Page 2
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`

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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 3 of 10 PageID #: 2603
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`
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`TABLE OF AUTHORITIES
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`CASES
`Danco, Inc. v. Fluidmaster, Inc.,
`No. 5:16-cv-73-JRG-CMC (E.D. Tex. June 6, 2017) ................................................................. 3
`Promethean Insulation Tech. LLC v. Sealed Air Corp.,
`No. 2:13-cv-1113-JRG-RSP (E.D. Tex. July 22, 2015) ............................................................. 5
`
`i
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`EX1038, Page 3
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`

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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 4 of 10 PageID #: 2604
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`Samsung continues to base its request for an immediate stay in the midst of Markman
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`briefing largely, if not entirely, on rationales that apply to a stay prior to the Markman hearing.
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`But Dr. Sung has already agreed to that latter stay. (Opp. Br. at 12.) So the question for the
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`Court is simply whether Samsung has shown good cause for, or that the Ericsson factors support,
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`staying this case immediately rather than three weeks from now. Samsung has failed to establish
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`the requisite support for entering the immediate stay it has requested.
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`While Samsung touts as justification the potential savings of “additional expenses,” Dr.
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`Sung (an individual inventor) is not troubled by the cost of completing the ongoing Markman
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`briefing process (particularly where, as here, savings, not expenses, could be realized by
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`completing, rather than, halting the ongoing Markman briefing should Samsung’s Motion be
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`denied) or by the marginal expense of a few more weeks of discovery—which Samsung had not
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`previously raised with Plaintiff during their prior meet and confer.
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` Rather, any savings to Samsung, a multinational conglomerate, from having to complete
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`its responsive Markman brief over the nine days following filing of this sur-reply are likely to be
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`marginal.1 Moreover, any complaints about the costs of discovery are a red herring, when
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`Samsung still has not even met and conferred with Dr. Sung about a stay of discovery or any
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`extensions of deadlines, and for good reasons—Samsung is still steadfastly pursuing new third-
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`party discovery, including discovery from Texas Instruments Inc. in the midst of the parties’
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`briefing on Samsung’s Motion to Stay, which seriously undermines Samsung’s argument
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`regarding the purported costs of discovery that would be borne by Samsung if a stay is not
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`granted. (See Opp. at 1–2, n.1.) Samsung’s own choices to engage in offensive discovery during
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`
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`1 To be sure, it is possible that Samsung may not yet have incurred any such expenses because it
`has decided to play Russian roulette by gambling on winning its Motion to Stay. But if Samsung
`were prudent and hedged its bets, and work on its brief is indeed well underway to meet the filing
`deadline nine days hence, such savings will be minimal.
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`1
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`EX1038, Page 4
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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 5 of 10 PageID #: 2605
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`this period, coupled with Samsung’s routine discovery obligations, do not justify a stay in this
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`judicial district during the midst of Markman briefing.
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`I.
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`SAMSUNG’S REPLY STILL DOES NOT ESTABLISH GOOD CAUSE FOR
`STAYING THIS CASE IN THE MIDST OF MARKMAN BRIEFING
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`Samsung appears to mischaracterize Dr. Sung’s explanations of why TI’s motion for
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`summary judgment (“MSJ”) does not justify an immediate stay here. The efficiency rationale in
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`this case is illusory without an estoppel against Samsung. While it is true that “TI can still raise
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`the same invalidity arguments at trial and present those factual disputes to the jury” (Reply Br. at
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`2), that misses the point. Should its motion be denied, TI would be barred from filing another
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`MSJ in that case on the exact same grounds due to the law of the case. But that is no obstacle to
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`Samsung, which is free to simply recycle those exact same arguments should Samsung decide to
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`follow suit and file the same MSJ in this case.2 So any claims about efficiency are illusory, as
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`they not only depend on TI’s motion being granted, but also fail to apply to Samsung’s request to
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`stay this case immediately rather than 22 days from now.
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`Samsung’s misunderstanding of the interplay between the TI case and this one continues
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`to warp its view of this case. Samsung is incorrect that Dr. Sung “ignores the Court’s ruling in
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`the TI case.” (Reply Br. at 3.) Dr. Sung has not “ignored” that ruling because that ruling—from
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`a separate case where Samsung is neither a party nor bound by any adverse consequence—does
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`not apply here. Nor did this Court state that this case could also be resolved without the need for
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`further discovery or claim construction.3 While an ultimate invalidity ruling on Dr. Sung’s
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`patents will apply beyond any one case, that substantive principle of patent law does not extend
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`
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`2 Tellingly, at no point has Samsung even suggested that it would not file a MSJ of invalidity in
`this case on the same grounds asserted by TI should TI’s MSJ be denied.
`3 Dr. Sung is not requesting claim construction at the present time, but merely that the parties
`complete the briefing process that had already begun.
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`2
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`EX1038, Page 5
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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 6 of 10 PageID #: 2606
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`to discretionary procedural rulings. Samsung’s “heads I win; tails I don’t lose” usage of the TI
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`case is legally unsupported and fails to provide good cause for a stay in the midst of Markman
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`briefing.
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`II.
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`SAMSUNG HAS FAILED TO SHOW THAT THE ERICSSON FACTORS
`SUPPORT STAYING THIS CASE IN THE MIDST OF MARKMAN BRIEFING
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`Samsung’s self-serving mis-application of Ericsson similarly begs the question, assuming
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`the propriety of Samsung’s position and the outcome of TI’s MSJ and working backwards from
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`there. But even if these factors support a stay following the conclusion of Markman briefing,
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`which Dr. Sung does not oppose, they do not justify the rush to an immediate stay that Samsung
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`has requested.
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`Samsung’s analysis of the first Ericsson factor is entirely backwards. As was explained
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`in the Opposition brief, it is Samsung’s burden to show that its requested stay is appropriate, and
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`it is Samsung’s burden to show that its stay request will not create a tactical disadvantage to Dr.
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`Sung. (Opp. Br. at 3.) Samsung’s demand for an immediate stay did not oblige Dr. Sung to
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`accept at all (and certainly not immediately), and Samsung has identified no authority to the
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`contrary. Rather, it is not the policy of this Court to stay actions pending decisions on potentially
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`dispositive motions. (Id. (citing Danco, Inc. v. Fluidmaster, Inc., No. 5:16-cv-73-JRG-CMC,
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`Dkt. No. 69, slip op. at 1 (E.D. Tex. June 6, 2017)).)
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`Nevertheless, Samsung now claims that “the purported tactical disadvantage is of
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`Plaintiff’s own making” solely because Dr. Sung declined to instantaneously accept Samsung’s
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`May 14th demand to stay all proceedings in this case. (Reply Br. at 3.) But at that time—the
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`afternoon of the day before the P.R. 4-3 joint statement was due—Samsung’s counsel did not
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`request an immediate response or flag the start of the Markman briefing process as any reason
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`for urgency. Samsung’s counsel indicated no concern for the P.R. 4-3 briefing schedule, merely
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`3
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`EX1038, Page 6
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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 7 of 10 PageID #: 2607
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`requesting “availability to meet and confer th[at] week” if Dr. Sung did not agree. (Dkt. 56-6.)
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`Samsung’s effort to blame Dr. Sung for the tactical disadvantage that he will suffer from an
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`order staying this case in the midst of Markman briefing is based on Samsung’s revisionist
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`history.
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`In any event, Samsung fails to show that Dr. Sung will not suffer a tactical disadvantage
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`from a stay entered in the midst of Markman briefing rather than after its conclusion. Samsung’s
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`discussion of Uniloc 2017 (Reply at 4–5) again misses the point—that the Uniloc 2017 court
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`rejected Samsung’s similar effort to leverage third-party proceedings to gain another bite at the
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`apple of invalidity without having to deal with the core of estoppel. Regardless of the extent of
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`overlap in claims between the proceedings, the Uniloc 2017 court was justifiably concerned that
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`there would be nothing preventing re-litigation of any claims and expressly denied Samsung’s
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`earlier effort to obtain a “no-lose stay”—the same situation now presented to this Court.
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`On the second Ericsson factor, it is Samsung that is “plainly incorrect,” as Samsung
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`misreads the applicable standards and conflates its prognostication with certainty. (Reply Br. at
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`5.) To be sure, any simplification that could result from a stay is highly contingent upon TI’s
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`MSJ being granted, which is hardly certain. With nothing preventing Samsung from relitigating
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`the same invalidity argument in its own MSJ in this case, there is no scenario in which the issues
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`“will be simplified”—which is the actual standard. Any simplification that could potentially be
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`realized by entering a stay in the midst of Markman briefing is just as achievable when a stay is
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`entered upon completing the parties’ claim construction briefing.
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`Finally, on the third Ericsson factor, Samsung fails to rebut that the courts in this judicial
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`district are loath to enter a stay in the midst of Markman briefing (Opp. Br. at 11–12 (citing
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`Promethean Insulation Tech. LLC v. Sealed Air Corp., No. 2:13-cv-1113-JRG-RSP, Dkt. No.
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`4
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`EX1038, Page 7
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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 8 of 10 PageID #: 2608
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`222, slip op. at 5 (E.D. Tex. July 22, 2015))) and seeks to back away from its own concession
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`that completing Markman briefing is “a convenient stopping point for the case” that “has
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`certainly some merit.” (Dkt. 56 at 11.) That the TI Court has found in a different case that it can
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`resolve invalidity issues raised in the MSJ without the need for the Court to construe the claims
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`does not support a sudden halt to an ongoing Markman briefing process already underway
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`here—especially when that would create a tactical advantage for Samsung and a disproportional
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`disadvantage for Dr. Sung. Even if claim construction were not necessary—as Dr. Sung has
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`already conceded by agreeing to stay these proceedings at the end of Markman briefing—it does
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`not follow that it is unnecessary to complete the briefing that would still be required in this case
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`should Samsung’s hopes about the TI MSJ fail to come to fruition.
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`III. CONCLUSION
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`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. Samsung
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`has failed to show good cause to enter a stay in the midst of Markman briefing, and Ericsson
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`factors do not support entry of a stay in the midst of Markman briefing, especially when Dr.
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`Sung has agreed to stay these proceedings once Markman briefing has concluded 22 days from
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`now.
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`5
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`EX1038, Page 8
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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 9 of 10 PageID #: 2609
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`
`Dated: June 24, 2024
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`
`
`
`/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
`
`6
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`EX1038, Page 9
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`Case 4:23-cv-00752-SDJ Document 72 Filed 06/24/24 Page 10 of 10 PageID #: 2610
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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 24, 2024
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`/s/ Alex Chan
`Alex Chan
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`EX1038, Page 10
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