Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 1 of 22 PageID #: 33177
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AX WIRELESS LLC,
`
`Plaintiff,
`
`Civil Action No. 2:22-cv-00277-RWS-RSP
`
`v.
`
`DELL INC., et al.,
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`OPPOSED MOTION TO STAY PENDING RESOLUTION OF INSTITUTED INTER
`PARTES REVIEW OF DEFENDANTS DELL INC. AND DELL TECHNOLOGIES INC.
`
`DELL-1047
`10,079,707
`
`

`

`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 2 of 22 PageID #: 33178
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`
`
`I. 
`
`II. 
`
`III. 
`
`TABLE OF CONTENTS
`
`Page
`
`BACKGROUND ............................................................................................................ 2 
`
`A. 
`
`B. 
`
`C. 
`
`AX Wireless Sued Dell in July 2022 and Expanded Its Infringement
`Claims in October and November 2022 .............................................................. 2 
`
`Third-Party Intel Timely Filed IPRs Challenging All Asserted Patent
`Claims, and the PTAB Instituted IPRs on All but 5 Asserted Claims ................ 3 
`
`Dell Agreed Not to Pursue in This Court the Same Grounds That Were
`Raised or Reasonably Could Have Been Raised in the Instituted IPRs ............. 4 
`
`LEGAL STANDARD ..................................................................................................... 4 
`
`THE COURT SHOULD STAY THE CASE IN ITS ENTIRETY PENDING
`RESOLUTION OF THE INSTITUTED IPRS ............................................................... 5 
`
`A.  With IPRs Instituted on All Eight Asserted Patents, Staying This Case in
`Its Entirety Will Greatly Simplify the Issues to Be Decided .............................. 6 
`
`B. 
`
`C. 
`
`The Prejudice Factor Weighs in Favor of a Stay Because AX Wireless Is a
`Non-Practicing Entity That Can Be Fully Compensated Through Monetary
`Damages ............................................................................................................ 10 
`
`The Stage-of-Proceedings Factor Is Neutral to a Stay Because the Most
`Burdensome Parts of the Case Lie Ahead, and Dell Timely Filed This
`Motion ............................................................................................................... 12 
`
`1. 
`
`2. 
`
`The most burdensome parts of the case still lie ahead .......................... 12 
`
`The IPR petitions and the instant motion were timely .......................... 13 
`
`IV. 
`
`CONCLUSION ............................................................................................................. 15 
`
`
`
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`

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`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 3 of 22 PageID #: 33179
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`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`
`CASES
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)..................................................................................................7
`
`Cywee Grp. Ltd. v. Samsung Elecs. Co.,
`No. 2:17-CV-00140-WCB-RSP, 2019 WL 11023976 (E.D. Tex. Feb. 14,
`2019) ................................................................................................................................ passim
`
`Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd.,
`No. 2:15-cv-00011, 2016 WL 1162162 (E.D. Tex. Mar. 23, 2016) ........................................13
`
`Image Processing Techs., LLC v. Samsung Elecs. Co.,
`No. 2:16-cv-505, 2017 WL 7051628 (E.D. Tex. Oct. 25, 2017) .............................................13
`
`Motion Games, LLC v. Nintendo Co.,
`No. 6:12-cv-878, 2015 WL 13404313 (E.D. Tex. June 8, 2015) ............................................13
`
`NFC Tech. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) .................................. passim
`
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013)..................................................................................................9
`
`Papst Licensing GmbH & Co., KG v. Apple, Inc.,
`No. 6:15-cv-01095-RWS, 2017 WL 11638426 (E.D. Tex. June 16, 2017) ......................12, 13
`
`Parthenon Unified Memory Artchitecture, LLC v. HTC Corp.,
`No. 2:14-cv-00690-RSP, 2016 WL 3365855 (E.D. Tex. Jun. 17, 2016) .................................13
`
`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-cv-00390-RWS-RSP, 2019 WL 3826051 (E.D. Tex. Aug. 14, 2019) .......................6
`
`Perdiemco LLC v. Telular Corp.,
`No. 2:16-CV-01408-JRG-RSP, 2017 WL 2444736 (E.D. Tex. June 6, 2017) ........................10
`
`SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...............................................................................................................6
`
`Smartflash, LLC v. Apple Inc.,
`621 F. App’x 995 (Fed. Cir. 2015) ..........................................................................................13
`
`SSL Servs., LLC v. Cisco Sys., Inc.,
`No. 2:15-cv-433-JRG-RSP, 2016 WL 3523871 (E.D. Tex. Jun. 28, 2018) ......................13, 14
`
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`

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`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 4 of 22 PageID #: 33180
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`
`TABLE OF AUTHORITIES
`(Continued)
`
`
`Page(s)
`
`
`CASES (CONT.)
`
`Stingray Music USA, Inc. v. Music Choice,
`No. 2:16-cv-00586-JRG-RSP, 2017 WL 9885167 (E.D. Tex. Dec. 12, 2017) .......5, 10, 11, 12
`
`Stragent LLC v. BMW of N. Am, LLC,
`No. 6:16-cv-446, 2017 WL 3709083 (E.D. Tex. Jul. 11, 2017) ..............................................10
`
`SynQor, Inc. v. Vicor Corp.,
`No. 2:14-cv-287, 2015 WL 12916396 (E.D. Tex. Nov. 24, 2015) ..........................................13
`
`Village Green Techs., LLC v. Samsung Elecs. Co.,
`No. 2:22-cv-00099-JRG, 2023 WL 416419 (E.D. Tex. Jan. 25, 2023) ...................................11
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)................................................................................................12
`
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`

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`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 5 of 22 PageID #: 33181
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`Defendants Dell Inc. and Dell Technologies Inc. (collectively, “Dell”) move to stay this
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`patent case filed by AX Wireless LLC (“AX Wireless”) because the Patent Trial & Appeals Board
`
`(“PTAB”) has instituted inter partes review (“IPR”) proceedings against all asserted patents and
`
`nearly all asserted claims. AX Wireless alleges that hundreds of Wi-Fi 6-certified consumer
`
`electronic products sold by Dell (“Dell products”) infringe eight patents, each of which they also
`
`assert against Lenovo Group Limited (“LGL”), HP Inc. (“HPI”), and Acer in co-pending
`
`litigation.1 Trials for LGL, Dell, and HPI are set for the same day, July 15, 2024, and expert
`
`discovery is about to begin. The Acer trial is more than ten months away, on January 6, 2025. A
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`tremendous amount of party and judicial resources will be necessary to take any one of these cases
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`to trial—let alone all four.
`
`On balance, the stay factors strongly weigh in favor of a stay. First, the IPRs instituted
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`between February 14 and March 5, 2024, on all eight patents will greatly simplify the issues, not
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`just in the Dell case, but in all four cases because AX Wireless asserts the same patents. For each
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`asserted claim addressed on the merits, the PTAB found the claim reasonably likely to be found
`
`invalid in view of prior art. Though the PTAB discretionarily denied institution of a handful of
`
`claims in one patent, the PTAB nevertheless instituted IPR of other patents with nearly identical
`
`claim limitations. If the instituted IPRs succeed, the overlapping scope of the claims across several
`
`of the patents will subject the few non-instituted claims to collateral estoppel. Otherwise, litigation
`
`of any surviving claims can resume in early 2025, approximately seven months from the currently-
`
`scheduled trial date. Second, this seven-month delay will cause no undue prejudice because
`
`plaintiff is a non-practicing entity whose claims, if successful, could be satisfied by monetary
`
`
`1 See Case Nos. 2:22-cv-00280 (E.D. Tex.), ECF No. 29 (Am. Compl. against LGL), ¶ 27; 2:22-
`cv-00279 (E.D. Tex.), ECF No. 16 (Am. Compl. against HPI), ¶ 28; 2:23-cv-00041 (E.D. Tex.),
`ECF No. 49 (Am. Compl. against Acer), ¶ 27.
`
`1
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`

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`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 6 of 22 PageID #: 33182
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`damages. Finally, this Court has found that IPRs can significantly simplify the issues, especially
`
`where the most burdensome parts of the case—expert discovery, dispositive motions, Daubert
`
`motions, pretrial exchanges, trial preparation, and trial—all lie in the future. Accordingly, Dell
`
`requests that the Court stay the entirety of the litigation through resolution of the instituted IPRs.
`
`I.
`
`BACKGROUND
`A.
`
`AX Wireless Sued Dell in July 2022 and Expanded Its Infringement Claims
`in October and November 2022
`
`AX Wireless is a non-practicing entity formed in 2021 to monetize patents purportedly
`
`related to technology incorporated into a version of Wi-Fi called Wi-Fi 6. See ECF No. 1 (Compl.),
`
`¶ 23. AX Wireless filed its original Complaint on July 22, 2022, asserting that Dell infringed one
`
`claim from each of four related patents. See ECF No. 1, ¶¶ 34–37 (10,917,272 (“the ’272 patent”),
`
`11,212,146 (“the ’146 patent”), 9,973,361 (“the ’361 patent”) and 10,079,707 (“the ’707 patent”)).
`
`On October 17, 2022, AX Wireless amended its Complaint to assert one claim from four
`
`additional patents. ECF No. 19, ¶¶ 35–42 (U.S. Patent Nos. 9,584,262 (“the ’262 patent”),
`
`9,614,566 (“the ’566 patent”), 10,291,449 (“the ’449 patent”), 10,554,459 (“the ’459 patent”)). In
`
`November 2022, AX Wireless served its Preliminary Infringement Contentions adding one-
`
`hundred additional claims. Ex. 1 (Cover Pleading). While AX Wireless identifies one-hundred
`
`and eleven exemplary Dell products, its infringement allegations implicate hundreds of Wi-Fi 6-
`
`enabled PC, tablet, and laptop products that incorporate third-party Wi-Fi 6 modules manufactured
`
`by Intel, MediaTek, and Qualcomm. Ex. 2 (Attachment A).
`
`AX Wireless’s original Complaint pled relief related to previous and future sales of Dell
`
`products that are Wi-Fi 6 certified. As to future sales, AX Wireless asked that the court “[o]rder
`
`each Defendant to pay ongoing royalties in an amount to be determined for any continued
`
`infringement after the date of judgment” and “[e]njoin each Defendant and its subsidiaries, and
`
`2
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`

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`their officers, agents, servants, employees, and all persons in active concert with any of the
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`foregoing from further infringement.” See id. at 9–10; see also ECF No. 19 at 11. AX Wireless
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`has never moved for a preliminary injunction or abandoned its request for an ongoing royalty
`
`following any judgment of infringement against Dell.
`
`B.
`
`Third-Party Intel Timely Filed IPRs Challenging All Asserted Patent Claims,
`and the PTAB Instituted IPRs on All but 5 Asserted Claims
`
`Many of the accused Dell products incorporate Wi-Fi 6 modules manufactured by Intel.
`
`Following AX Wireless’s expanded disclosure of asserted claims and accused products in
`
`November 2022, Intel filed IPR petitions against all 108 then-asserted claims across the eight
`
`asserted patents. AX Wireless later reduced the number of asserted claims to 32 in accordance
`
`with the claim-narrowing provisions of the Docket Control Order. See Ex. 12 (email identifying
`
`asserted claims). The PTAB recently instituted on at least one ground of invalidity for 27 of the
`
`32 currently-asserted claims and on multiple grounds for 25 of the currently-asserted claims.2 The
`
`table below summarizes the relevant history of each instituted IPR:
`
`Asserted Claims Found Reasonably
`Date
`Date
`Challenged
`IPR Petition
`Likely to Be Invalid
`Instituted
`Filed
`Patent
`Number
`IPR2023-01136 10,079,707 06/30/23 02/14/2024 All current (and previously) asserted
`claims
`IPR2023-01137 10,291,449 06/30/23 02/14/2024 All current (and previously) asserted
`claims
`IPR2023-01138 10,554,459 06/30/23 02/14/2024 All current (and previously) asserted
`claims
`IPR2023-01139 10,917,272 06/30/23 02/14/2024 Previously-asserted claim nos. 1–3, 5,
`and 7–9
`07/01/23 02/14/2024 All current (and previously) asserted
`claims
`
`IPR2023-01135
`
`9,973,361
`
`
`2 See Institution Decisions at Ex. 3 (’707 patent) at 43–44, 48; Ex. 4 (’449 patent) at 39–40, 42;
`Ex. 5 (’459 patent) at 46–47, 51; Ex. 6 (’272 patent) at 45, 48; Ex. 7 (’361 patent) at 38–39, 45;
`Ex. 8 (’262 patent) at 38–40; Ex. 9 (’566 patent) at 41–42; Ex. 10 (’146 patent) at 25–26, 37–38.
`
`3
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`

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`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 8 of 22 PageID #: 33184
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`IPR Petition
`Number
`IPR2023-01143
`
`Challenged
`Patent
`9,584,262
`
`Asserted Claims Found Reasonably
`Date
`Date
`Likely to Be Invalid
`Instituted
`Filed
`07/01/23 02/14/2024 All current (and previously) asserted
`claims
`07/03/23 02/21/2024 All current (and previously) asserted
`claims
`IPR2023-01145 11,212,146 07/08/23 03/05/2024 All current (and previously) asserted
`claims
`
`IPR2023-01144
`
`9,614,566
`
`The PTAB discretionarily denied one IPR petition for the ’272 patent on procedural grounds,
`
`without addressing the petition’s merits. The PTAB’s denial rested solely on its finding that the
`
`claims should have been combined with and challenged in petition IPR2023-01139, which
`
`challenged other claims from the ’272 patent. Ex. 11 (IPR No. 2023-01140 decision denying
`
`institution). Thus, all but 5 asserted claims of one patent are subject to instituted IPRs (i.e., claims
`
`11, 12, 13, 15, and 17 of the ’272 patent). Id.
`
`C.
`
`Dell Agreed Not to Pursue in This Court the Same Grounds That Were
`Raised or Reasonably Could Have Been Raised in the Instituted IPRs
`
`In each of the instituted IPRs, Dell provided a “Sotera stipulation,” wherein Dell
`
`“stipulate[d] not to pursue in a parallel district court proceeding the same grounds as in [each IPR]
`
`petition or any grounds that could have reasonably raised in [each] petition.” See, e.g., Ex. 9 (’566
`
`patent institution decision) at 52 (quoting USPTO’s “Interim Procedure for Discretionary Denials
`
`in AIA Post-Grant Proceedings with Parallel District Court Litigation” (June 21, 2022)); see also
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`Exs. 13–20 (Sotera stipulations for each instituted IPR).
`
`II.
`
`LEGAL STANDARD
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`A stay is justified when “the outcome of [] PTO proceeding[s]” regarding the validity of
`
`patents at issue in a case are “likely to assist the court in determining patent validity or eliminate
`
`the need to try infringement issues.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058, 2015
`
`WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015) (citing cases). District courts typically consider
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`three factors when determining whether to grant a stay pending inter partes review of a patent in
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`suit: (1) “whether the stay will likely result in simplifying the case before the court;” (2) “whether
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`the stay will unduly prejudice the nonmoving party;” and (3) “whether the proceedings before the
`
`court have reached an advanced stage.” See id. at *2. The “prospect that [an] inter partes review
`
`proceeding will result in simplification of [] issues before the Court” is the “most important factor
`
`bearing on whether to grant a stay.” See id. at *4.
`
`III. THE COURT SHOULD STAY THE CASE IN ITS ENTIRETY PENDING
`RESOLUTION OF THE INSTITUTED IPRS
`
`The most important of the stay factors weighs strongly in favor of a stay: the PTAB’s final
`
`decisions on the instituted IPRs could invalidate 27 of the 32 asserted claims and collaterally estop
`
`AX Wireless from pursuing the 5 non-instituted claims. Even if the IPRs do not eliminate all eight
`
`patents entirely, they will undoubtedly simplify the issues for expert discovery, dispositive
`
`motions, and trial. These benefits inure to the LGL, HP, and Acer cases, as well. A modest stay
`
`will not unduly prejudice AX Wireless’s pursuit of money damages, and that minimal delay would
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`be greatly outweighed by the efficiencies of a stay. Expert discovery is only about to begin, so the
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`benefits of simplification will economize the most intensive phases of the case, from expert
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`discovery through trial. Under similar circumstances, courts in this District have granted stays.
`
`See, e.g., Cywee Grp. Ltd. v. Samsung Elecs. Co., No. 2:17-CV-00140-WCB-RSP, 2019 WL
`
`11023976 (E.D. Tex. Feb. 14, 2019) (staying two-year old case at close of discovery stage—three
`
`months before trial—where PTAB instituted review of the majority (but not all) of the asserted
`
`claims); Stingray Music USA, Inc. v. Music Choice, No. 2:16-cv-00586-JRG-RSP, 2017 WL
`
`9885167 (E.D. Tex. Dec. 12, 2017) (staying case following submission of expert reports pending
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`resolution of IPRs that were instituted on all but a few asserted claims). Accordingly, a stay
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`pending resolution of the instituted IPRs is warranted.
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`5
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`

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`33186
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`A. With IPRs Instituted on All Eight Asserted Patents, Staying This Case in Its
`Entirety Will Greatly Simplify the Issues to Be Decided
`
`The simplification factor strongly favors a stay. Every IPR-instituted claim will either be
`
`found invalid by the PTAB or subject to IPR estoppel upon the PTAB’s final written decision. If
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`the five non-instituted claims of the ’272 patent are not collaterally estopped through invalidation
`
`of analogous claims in other IPRs, the ’272 patent can be litigated in a streamlined manner
`
`following the PTAB’s resolution of those analogous claims. See Cywee, 2019 WL 11023976, at
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`*7–10. And since the same patents are asserted in other pending litigations against LGL, HPI, and
`
`Acer, the IPR proceedings will have an even greater simplification effect.
`
`First, the most likely simplification from the instituted IPRs is that all asserted claims from
`
`seven of the patents will be found invalid, which will “unquestionably” simplify the case. See id.
`
`at *9. The Board has already found a reasonable likelihood that 27 asserted claims across seven
`
`patents would be invalid over at least one prior art reference or combination, and for 25 of those
`
`claims, likely invalid over two distinct sets of prior art. See above, Section II.B. In view of the
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`Supreme Court’s decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), some courts have
`
`found a “weaker inference that the PTAB will determine that all challenged claims are
`
`unpatentable” after institution, because the PTAB is required to institute all claims challenged in
`
`a petition even though only one may be reasonably likely to be invalid over the presented prior art.
`
`See Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 2:18-cv-00390-RWS-RSP, 2019 WL
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`3826051, at *2 (E.D. Tex. Aug. 14, 2019). But SAS has no bearing on this factor here, because
`
`the PTAB expressly found that all 27 instituted, asserted claims are reasonably likely to be invalid
`
`on one or more prior art grounds. See above, Section II.B.
`
`In addition, although five asserted claims from the ’272 patent are not part of any instituted
`
`IPR (review was denied on procedural grounds, see above, Section II.B), these claims are merely
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`6
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`33187
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`Beauregard versions of method claims that are nearly identical to another patent subject to the
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`instituted IPRs. Thus, resolution of the instituted IPRs is highly likely to simplify issues related
`
`to these claims. A Beauregard claim is a “claim to a computer readable medium (e.g., a disk, hard
`
`drive, or other data storage device) containing program instructions for a computer to perform a
`
`particular process.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
`
`Cir. 2011). Non-instituted claims 11, 12, 13, 15, 17 of the ’272 patent merely claim a “[a] non-
`
`transitory computer-readable information storage media” storing instructions for performing the
`
`same methods recited in claims 9, 10, 11, and 13 of the ’707 patent, which is facing review in
`
`instituted IPR No. IPR2023-01136. See Ex. 3 at 7–8. As the below redline comparison of these
`
`claims makes clear, the only difference between claims 11, 12, 13, and 15 of the ’272 patent and
`
`claims 9, 10, 11, and 13 of the ’707 patent is the preamble’s recitation of computer-readable media:
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`7
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`Case 2:22-cv-00277-RWS-RSP Document 179 Filed 03/13/24 Page 12 of 22 PageID #:
`33188
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`Compare Ex. 21 (’272 patent) and Ex. 22 (’707 patent). Dependent claim 17 of the ’272 patent
`
`adds only a single limitation not found in the claims of the ’707 patent, but that limitation is present
`
`in other instituted claims. Compare Ex. 21 (’272 patent) at claim 17 (“wherein the first packet
`
`type is received in a first channel bandwidth and the second packet type is received in a second
`
`channel bandwidth, wherein the first channel bandwidth is at least two times wider than the second
`
`channel bandwidth.”) with Ex. 23 (’459 patent) at claim 1 (“a wireless OFDM communications
`
`receiver operable to receive … a first packet type in a first channel bandwidth … a second packet
`
`type in a second channel bandwidth … wherein the first channel bandwidth is at least two times
`
`wider than the second channel bandwidth.”). Because the PTAB determined that there is a
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`8
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`33189
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`reasonable likelihood that claims 9, 10, 11, and 13 of the ’707 patent, and claim 1 of the ’459
`
`patent, are all invalid (each on two grounds of invalidity), and these claims are materially identical
`
`to the not-instituted, asserted claims from the ’272 patent, resolution of the instituted IPR of the
`
`’707 and ’459 patents will very likely simplify, if not eliminate, litigation of the ’272 patent claims
`
`here. See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342-43 (Fed. Cir. 2013)
`
`(affirming summary judgment of invalidity on the basis of collateral estoppel because “the
`
`differences between the unadjudicated patent claims and [previously] adjudicated patent claims”
`
`found invalid did not “materially alter the question of invalidity.”). In Cywee, 2019 WL 11023976,
`
`at *10, the Court granted a stay of an eleven-claim case because, “even though claims 14–17 and
`
`19 are not directly at issue in the IPR proceeding, the validity of those claims could be affected by
`
`the PTAB’s analysis of the claims before it, which involve related technology” and were from the
`
`same patent as other instituted claims. The facts here are even stronger because the non-instituted
`
`claims from the ’272 patent are identical to the instituted claims of the ’707 patent, except for the
`
`Beauregard preambles and one limitation found in instituted claims of the ’459 patent.
`
`Even if the ’272 patent claims were not effectively doppelgangers of claims in the instituted
`
`IPRs, this factor would still weigh heavily in favor of stay given the potential for simplifying the
`
`vast majority of the rest of the case (i.e., as to the other seven patents). “[C]ourts in this district
`
`have regularly issued stays in cases [where] IPR proceedings have been instituted on fewer than
`
`all claims asserted in the related litigation.” Cywee, 2019 WL 11023976, at *8 (“the policies
`
`favoring simplification and the reduction of litigation burdens on the parties and the court are often
`
`[still] applicable” even where not all asserted claims are instituted) (collecting cases). In Cywee,
`
`the Court granted a stay even though five of the asserted claims were not subject to an instituted
`
`IPR. See id. *7–10. In finding that the simplification factor still “strongly” favored the defendant,
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`33190
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`the Court recognized the case would “unquestionably” become simpler by virtue of the removal
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`from (or estoppel as to) the asserted claims, while reducing the potential of inconsistent
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`determinations as to the validity of the asserted claims between the PTAB and the Court. See id.
`
`The same considerations apply with even greater force here. The Cywee Court granted its stay
`
`where the PTAB had instituted six of the eleven asserted claims from two patents; here, the PTAB
`
`will instead address the validity of twenty-seven of thirty-two asserted claims across seven patents.
`
`Given the particularly “complex” technology at issue in this case, simplification across the seven
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`patents with all asserted claims instituted will make any post-stay litigation “much easier” for the
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`Court and jury. See id. at *9; see also Stingray Music, 2017 WL 9885167, at *2 (granting stay
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`notwithstanding two asserted claims not subject to institution given the potential to greatly simplify
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`litigation regarding the remaining ~60 claims).
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`Accordingly, the most important factor—simplification of the issues for trial—strongly
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`favors a stay of the entirety of the proceedings to reduce the need for duplication in discovery and
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`inconsistent findings at trial.
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`B.
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`The Prejudice Factor Weighs in Favor of a Stay Because AX Wireless Is a
`Non-Practicing Entity That Can Be Fully Compensated Through Monetary
`Damages
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`This factor weighs in favor of a stay because none of the recognized types of “undue
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`prejudice” are present. That AX Wireless may face “mere delay in collecting” money “damages
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`does not constitute undue prejudice.” See Stragent LLC v. BMW of N. Am, LLC, No. 6:16-cv-446,
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`2017 WL 3709083, at *2 (E.D. Tex. Jul. 11, 2017); Perdiemco LLC v. Telular Corp., No. 2:16-
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`CV-01408-JRG-RSP, 2017 WL 2444736, at *2 (E.D. Tex. June 6, 2017) (prejudice factor “weighs
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`in favor of a stay” where only alleged concerns are a delay in receiving damages and the advanced
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`age of a non-party witness) (emphasis added); Cywee, 2019 WL 11023976, at *3 (dismissing
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`“contention that any delay in the vindication of patent rights is prejudicial to a patent owner”
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`because “that factor is present in every case in which a patentee resists a stay, and it is therefore
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`not sufficient, standing alone, to defeat a stay motion.”) (collecting cases).
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`While AX Wireless also nominally requests injunctive relief, there is no evidence that
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`money damages are inadequate to address AX Wireless’s alleged injuries and thus, no undue
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`prejudice from delay. First, because AX Wireless is a non-practicing entity and not a competitor
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`to Dell in the market for products to the technology at issue, its “prospect of an injunction is low”
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`even if it purports to seek one. See Cywee, 2019 WL 11023976, at *4. Most notably, AX Wireless
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`requests both monetary and injunctive relief for the same acts of alleged future infringement. See
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`ECF No. 19 at 11. This is direct evidence that AX Wireless’s claims could be resolved by an
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`award of money damages after a short stay. See Village Green Techs., LLC v. Samsung Elecs.
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`Co., No. 2:22-cv-00099-JRG, 2023 WL 416419, at *2 (E.D. Tex. Jan. 25, 2023). Further, AX
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`Wireless has not sought the preliminary injunction it pleads, which further undermines any claim
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`that it “cannot wait for a decision on infringement.” See Stingray Music, 2017 WL 9885167, at
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`*2; Village Green, 2023 WL 416419, at *2 n.2 (in dismissing patent owner opposition to a stay
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`based on request for injunctive relief, noting that patent owner never sought the preliminary
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`injunction it pled at the outset of the case).
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`Any delay resulting from a stay in this case is likewise not unduly prejudicial to AX
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`Wireless. Trial is currently scheduled for July 2024, with final written decisions on the IPRs due
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`about seven months later, from mid-February to early March 2025. Moreover, HPI, Dell, and LGL
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`are scheduled for trial on the same day, July 15, 2024. It is unlikely that all three cases in these
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`consolidated actions will go to trial on the same day, and much more likely that trial in the Dell
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`matter will be continued. Were trial in the Dell matter rescheduled, the time between the final
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`written decisions and trial would be even shorter. A delay of approximately six months has been
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`found to not constitute undue prejudice. Stingray Music, 2017 WL 9885167, at *2. The delay
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`here is not materially longer, and any prejudice could be remedied by the application of
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`prejudgment interest to any damages award. Finally, AX Wireless cannot claim undue prejudice
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`from the fact that a non-party filed the IPRs, because Dell has stipulated that it “will not pursue in
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`this litigation grounds raised or any other grounds that could have reasonably been raised before
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`the PTAB” in the instituted IPRs. See Exs. 13–20; see also Papst Licensing GmbH & Co., KG v.
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`Apple, Inc., No. 6:15-cv-01095-RWS, 2017 WL 11638426, at *3 (E.D. Tex. June 16, 2017).
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`C.
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`The Stage-of-Proceedings Factor Is Neutral to a Stay Because the Most
`Burdensome Parts of the Case Lie Ahead, and Dell Timely Filed This Motion
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`This factor is neutral because the parties are only about to begin expert discovery and are
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`
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`several months away from trial, so “the most burdensome parts of the case … all lie in the future.”
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`See Cywee, 2019 WL 11023976, at *6–7 (collecting cases). Further, neither the filing of the IPRs
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`or the timing of this motion were dilatory in a manner that would weigh against a stay. See NFC
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`Tech., 2015 WL 1069111, at *3–4.
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`1.
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`The most burdensome parts of the case still lie ahead
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`Courts assess the state of the proceedings as of the date a motion to stay is filed—here,
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`March 13, 2024. VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1317 (Fed. Cir. 2014).
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`Trial is four months away (July 15, 2024) and may be further delayed, the scheduled pretrial
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`conference is three months away (June 14, 2024), dispositive motions are not due for two months
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`(May 15, 2024), expert discovery will continue for just under two months (i.e., until May 8, 2024),
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`and fact discovery is still underway (closing on March 20, 2024). See ECF Nos. 171 and 169
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`(Sixth Am. Docket Control Order and related joint motion).
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`Courts in this district have granted stays at similar junctures3 and found this factor to be
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`neutral, or in some cases only slightly against a stay.4 As the Federal Circuit recognized in
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`reversing a lower court denial of a request for a pretrial stay, the “most burdensome task is yet to
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`come,” even in preparing for a trial that is “mere months away.” See Smartflash, LLC v. Apple
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`Inc., 621 F. App’x 995, 1005 (Fed. Cir. 2015) (where the trial was “mere months away,” “[d]espite
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`the substantial time and effort already spent in this case, the most burdensome task is yet to come”);
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`NFC Tech., 2015 WL 1069111, at *3 (with several months to trial, “it appears likely that the bulk
`
`of the expenses that the parties would incur in pretrial work and trial preparation are still in the
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`future.”) Given the number of claims that have been instituted here, the “most burdensome task”
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`of trial preparation and trial would likely be significantly streamlined following resolution of the
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`instituted IPRs.
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`2.
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`The IPR petitions and the instant motion were timely
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`It is “reasonable” for a Defendant “to wait for the PTAB to institute IPR before filing its
`
`Motion to Stay,” especially as it is unlikely the Court would have granted a motion to stay prior to
`
`
`3 Motion Games, LLC v. Nintendo Co., No. 6:12-cv-878, 2015 WL 13404313 (E.D. Tex. June 8,
`2015) (granting stay with trial only four months away because there was “little doubt that a
`substantial amount of pretrial, trial and post-trial resources have yet to be expended.”); Image
`Processing Techs., LLC v. Samsung Elecs. Co., No. 2:16-cv-505, 2017 WL 7051628, at *1 (E.D.
`Tex. Oct. 25, 2017) (stay granted three weeks before trial); SSL Servs., 2016 WL 3523871, at *2
`(stay granted 2½ months before trial); Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd., No.
`2:15-cv-00011, 2016 WL 1162162, at *2 (E.D. Tex. Mar. 23, 2016) (stay granted two months
`before trial); SynQor, Inc.