Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 1 of 17 PageID 868
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`
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`v.
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`Plaintiff,
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`Civil Action No. 12-cv-02824-JPM-tmp
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`
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`SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
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`
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`Defendant.
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`B.E. TECHNOLOGY, L.L.C.,
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`
`
`v.
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`Plaintiff,
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`Civil Action No. 12-cv-02825-JPM-tmp
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`
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`SAMSUNG ELECTRONICS AMERICA
`INC.,
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`Defendant.
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`
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`MEMORANDUM OF LAW IN SUPPORT OF SAMSUNG’S
`MOTION TO STAY LITIGATIONS PENDING INTER PARTES REVIEW
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`Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 2 of 17 PageID 869
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................. 1
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`FACTUAL AND PROCEDURAL BACKGROUND....................................................... 3
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`A.
`
`B.
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`C.
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`B.E. Technology Alleges Infringement Of The ’290 Patent In Eleven
`Litigations Pending Before This Court .................................................................. 3
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`Defendants Filed Five Petitions For Inter Partes Review Of The ’290
`Patent...................................................................................................................... 3
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`This And The Other Litigations Involving The ’290 Patent Are At An
`Early Stage ............................................................................................................. 4
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`D.
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`The Parties’ Pre-Motion Discussions Regarding A Stay ....................................... 5
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`III.
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`ARGUMENT ..................................................................................................................... 5
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`A.
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`B.
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`Legal Standard ....................................................................................................... 5
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`The Present Litigation Should Be Stayed Pending Resolution Of The IPRs ........ 7
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`1.
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`2.
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`3.
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`A Stay Will Simplify the Issues, Regardless of the Outcome of the
`IPRs ............................................................................................................ 7
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`Discovery Is Not Complete and No Trial Date Has Been Set ................... 9
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`B.E. Will Not Be Unduly Prejudiced By A Stay ..................................... 10
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`C.
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`A Stay Should Be Granted Now: There Is No Need To Wait For The
`Patent Office’s Decision To Institute An IPR...................................................... 11
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`IV.
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`CONCLUSION ................................................................................................................ 12
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`-ii-
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`Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 3 of 17 PageID 870
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`CASES
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`TABLE OF AUTHORITIES
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`Akeena Solar Inc. v. Zep Solar Inc.,
`2010 WL 1526388 (N.D. Cal. Apr. 14, 2010) ........................................................................ 12
`
`Capriola Corp. v. LaRose Indus. LLC,
`2013 WL 1868344 (M.D. Fla. Mar. 11, 2013) ....................................................................... 12
`
`Cascades Computer Innovation, LLC v. SK Hynix Inc.,
`2012 WL 2086469 (N.D. Ill. May 25, 2012) ............................................................................ 2
`
`Crown Cent. Petroleum Corp. v. Dep’t of Energy,
`102 F.R.D. 95 (D. Md. 1984) .................................................................................................... 2
`
`Dura Global Tech., LLC v. Magna Int’l Inc.,
`2011 WL 5039883 (E.D. Mich. Oct. 24, 2011) ........................................................................ 6
`
`EMSAT Advanced v. T-Mobile USA, Inc.,
`2011 WL 843205 (N.D. Ohio Mar. 8, 2011) ............................................................................ 6
`
`Equipements de Transformation IMAC v. Anheuser-Busch Cos.,
`559 F. Supp. 2d 809 (E.D. Mich. 2008) .................................................................................... 5
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988)................................................................................................. 5
`
`e-Watch, Inc. v. Lorex Canada, Inc.,
`2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) ......................................................................... 8
`
`Geospan Corp. v. Pictometry Int’l Corp.,
`2012 WL 5942005 (D. Minn. Nov. 28, 2012) .......................................................................... 9
`
`Lincoln Elec. Co. v. Miller Elec. Mfg. Co.,
`2007 WL 2670039 (N.D. Ohio Sept. 7, 2007) .......................................................................... 6
`
`One Stockduq Holding, LLC v. Becton, Dickinson & Co. ("Stockduq I"),
`No. 2:12-cv-03037-JPM-tmp, D.E. 53 (W.D. Tenn. May 6, 2013) .................................. 11, 12
`
`One Stockduq Holding, LLC v. Becton, Dickinson & Co. ("Stockduq II"),
`No. 2:12-cv-03037-JPM-tmp, D.E. 85 (W.D. Tenn. Nov. 12, 2013) .............................. passim
`
`Regents of the Univ. of Mich. v. St. Jude Med., Inc.,
`2013 WL 2393340 (E.D. Mich. May 31, 2013)........................................................................ 6
`
`Semiconductor Energy Lab. Co. v. Chimei Innolux Corp.,
`2012 WL 7170593, at *2 (C.D. Cal. Dec. 19, 2012) .......................................................... 9, 10
`-iii-
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`Software Rights Archive, LLC v. Facebook, Inc.,
`2013 WL 5225522 (N.D. Cal. Sept. 17, 2013) ................................................................... 4, 10
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`SSW Holding Co. v. Schott Gemtron Corp.,
`2013 WL 4500091 (W.D. Ky. Aug. 21, 2013) ......................................................................... 6
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`Universal Elecs., Inc. v. Univ. Remote Control, Inc.,
`2013 WL 1876459 (C.D. Cal. May 2, 2013) ............................................................................ 7
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`Visual Interactive Phone Concepts, Inc. v. Samsung Telecommcn’s Am., LLC,
`2012 WL 1049197 (E.D. Mich. Mar. 28, 2012) ............................................................. 6, 8, 10
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`STATUTES
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`35 U.S.C. § 313 ............................................................................................................................... 4
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`35 U.S.C. § 314 ............................................................................................................................... 4
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`35 U.S.C. § 316 ............................................................................................................................... 4
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.107 .......................................................................................................................... 4
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`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`No. IPR2012-00001, Paper No. 15 (PTAB Jan. 9, 2013) ..................................................... 8, 9
`
`Universal Remote Control, Inc. v. Universal Elecs., Inc.,
`No. IPR2013-00152, Paper No. 8, 20 (Aug. 19, 2013) ............................................................. 9
`
`RULES
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`Fed. R. Civ. P. 1 .............................................................................................................................. 5
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`-iv-
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`Defendants Samsung Telecommunications America, LLC (“STA”) and Samsung
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`Electronics America, Inc. (“SEA”) (collectively, “Samsung”) respectfully move this Court to
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`stay this case as described below.
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`I.
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`INTRODUCTION
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`Samsung and Plaintiff B.E. Technology LLC (“B.E.”) agree that this case should be
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`stayed pending resolution of multiple petitions for inter partes review (“IPRs”) that were filed
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`last month challenging the validity of the ’290 and ’314 patents1—so long as all of the other
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`litigations pending before this court involving those patents are also stayed.
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`Shortly after the IPRs were filed with the Patent Office, Samsung and the 16 other
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`defendants that have been sued by B.E. in this District began discussing a stay with each other
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`and with B.E. Based on those discussions, including Samsung’s direct communication with B.E.
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`in compliance with its meet-and-confer obligations, Samsung understands that B.E. supports a
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`stay of each of the cases involving the ’290 and ’314 patents, so long as all those cases are
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`stayed. Samsung also understands that most, if not all, of the 16 other defendants will either
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`move to stay their respective cases, or will not actively oppose entry of a stay in their cases—
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`again so long as all the other cases involving the ’290 and ’314 patents are also stayed.2
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`1 U.S. Patent No. 6,771,290 is referred to herein as “the ’290 patent” and U.S. Patent No.
`6,628,314 is referred to herein as “the ’314 patent.”
`2 For example, Apple has indicated that, at this time, it does not plan to request a stay of its case
`but also does not plan to actively oppose such a stay should the Court order a stay with respect to
`all the litigations. Apple is apparently concerned that, by not opposing a stay, it may be deemed
`in privity with Samsung and the other IPR-filer defendants moving for a stay and therefore be
`subject to the same estoppels as those defendants if the IRPs are not successful. Samsung does
`not agree with, or fully understand, Apple’s position. Nevertheless, we understand that Apple
`and the other defendants may file notices or other papers in their respective cases further
`explaining their positions on a potential stay.
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`-1-
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`Accordingly, to avoid delay and to give effect to the virtual consensus amongst the
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`parties, Samsung has filed this motion to request a stay of this case pending resolution of the
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`IPRs, so long as all the other cases involving the ’290 and ’314 patents are also stayed.
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`Samsung further respectfully suggests that the Court’s inherent power to manage its
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`docket includes the ability to stay any action sua sponte, even absent any formal motion made by
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`the parties thereto. See, e.g., Cascades Computer Innovation, LLC v. SK Hynix Inc., 2012 WL
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`2086469, at *2 (N.D. Ill. May 25, 2012); Crown Cent. Petroleum Corp. v. Dep’t of Energy, 102
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`F.R.D. 95, 98 (D. Md. 1984) (citing Landis v. N. American Co., 299 U.S. 248, 254-55 (1936)).
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`While Samsung is not a party to the other cases involving the ’290 and ’314 patents, the strong
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`support for a stay from both plaintiff and defendants is important evidence that this Court should
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`should stay both this and the other related litigations.
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`That approach is sound because staying the litigations pending the Patent Office’s review
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`could moot all these litigations entirely by invalidating the claims B.E. has asserted. And
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`regardless of the outcome, staying these cases will allow the Patent Office to apply its expertise
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`in reassessing the scope and validity of the patents—before the Court tasks itself and the parties
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`with doing the same. For these reasons, as well as those discussed below that are specific to the
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`present litigation, Samsung moves the Court to stay this litigation pending resolution of the IPR
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`petitions filed against the ’290 patent, and respectfully requests that the Court exercise its
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`inherent power to stay the other related litigations as well.
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`-2-
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`A.
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`B.E. Technology Alleges Infringement Of The ’290 Patent In Eleven
`Litigations Pending Before This Court
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`In September 2012, B.E. sued 19 separate defendants, including SEA and STA, in related
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`actions before this Court (the “Related Actions”).3 B.E. alleges infringement of the ’290 Patent
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`in several of these Related Actions: those against defendants Amazon, Apple, Barnes & Noble,
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`Google, Microsoft, Samsung, Sony, and Motorola Mobility.
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`B.E. also alleges infringement of the ’314 patent and U.S. Patent No. 6,141,010 (“the
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`’010 patent”). B.E. alleges that defendants Apple, Google, Facebook, LinkedIn, Groupon,
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`Match.com, Microsoft, Pandora, People Media, and Twitter infringe the ’314 patent, and that
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`Amazon infringes the ’010 patent.
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`B.
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`Defendants Filed Five Petitions For Inter Partes Review Of The ’290 Patent
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`Samsung filed an IPR petition with the Patent and Trademark Office (“PTO”) on October
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`9, 2013 seeking review of claims 2 and 3 of the ’290 patent—the only claims asserted against
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`Samsung in the instant litigations. (See Ex. 1.)4 Four other IPR petitions challenging the same
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`claims of the ’290 patent were filed at around the same time: Google filed two petitions on
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`3 See B.E. v. Amazon Digital Servs., Inc., No. 2:12-cv-02767-JPM-cgc; B.E. v. Facebook, Inc.,
`No. 2:12-cv-02769-JPM-tmp; B.E. v. LinkedIn Corp., No. 2:12-cv-02772-JPM-dkv; B.E. v.
`Groupon, Inc., No. 2:12-cv-02781-JPM-cgc; B.E. v. Pandora Media, Inc., No. 2:12-cv-02782-
`JPM-cgc; B.E. v. Twitter, Inc., No. 2:12-cv-02783-JPM-cgc; B.E. v. Barnes & Noble, Inc., No.
`2:12-cv-02823-JPM-tmp; B.E. v. STA, No. 2:12-cv-02824-cgc; B.E. v. SEA, No. 2:12-cv-02825-
`JPM-tmp; B.E. v. Sony Computer Entm’t Am., Inc., No. 2:12-cv-02826-JPM-tmp; B.E. v. Sony
`Mobile Commcn’s (USA) Inc., No. 2:12-cv-02827-JPM-dkv; B.E. v. Sony Elecs. Inc., No. 2:12-
`cv-02828-JPM-tmp; B.E. v. Microsoft Corp., No. 2:12-cv-02829-JPM-tmp; B.E. v. Google Inc.,
`No. 2:12-cv-02830-JPM-cgc; B.E. v. Apple Inc., No. 2:12-cv-02831-JPM-cgc; B.E. v. Spark
`Networks, Inc., No. 2:12-cv-02832-JPM-cgc (since dismissed); B.E. v. People Media, Inc., No.
`2:12-cv-02833-JPM-dkv; B.E. v. Match.com, LLC, No. 2:12-cv-02834-JPM-dkv; B.E. v.
`Motorola Mobility Holdings, LLC, No. 2:12-cv-02866-JPM-dkv.
`4 Unless otherwise noted, all exhibits referenced herein are attached to the Declaration of Justin
`A. MacLean (“MacLean Decl.”) filed concurrently herewith. All references to the docket herein
`are to B.E. v. STA, No. 2:12-cv-2824.
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`October 7, Sony filed a petition on October 8, and Microsoft filed a petition on October 9. (See
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`Exs. 2-5.) Samsung also understands that four IPRs have been filed against the ’314 patent.
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`If B.E. chooses to file a preliminary response to any of the petitions against the ’290
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`patent, B.E. must file such a response within three months of being served with the petition—i.e.,
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`between January 7 and January 9, 2014, depending on the petition. See 35 U.S.C. § 313; 37
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`C.F.R. § 42.107(b). The PTO is statutorily obligated to grant or deny each of Defendants’
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`petitions within six months of its filing—i.e., between April 7 and April 9, 2014.5 35 U.S.C. §
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`314(b). The PTO is also statutorily obligated to resolve any IPR it institutes within a year,
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`extendable to 18 months only on a showing of good cause. 35 U.S.C. § 316(a)(11); Software
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`Rights Archive, LLC v. Facebook, Inc., 2013 WL 5225522, at *2 (N.D. Cal. Sept. 17, 2013).
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`C.
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`This And The Other Litigations Involving The ’290 Patent Are At An Early
`Stage
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`This and the other litigations involving the ’290 patent are early in discovery. No LPR
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`2.1(d) Patent Scheduling Conference has taken place, and and no trial date has been set. (See
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`D.E. 52.) The limited discovery that has occurred includes primarily the exchanges mandated by
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`the Local Patent Rules. Preliminary infringement, non-infringement, invalidity, and validity
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`contentions have been exchanged, and the parties exchanged their preliminary and final
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`identification of terms for construction on September 23 and November 5, 2013, respectively.
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`Only one deposition has taken place in this case, and that deposition was of a third-party
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`regarding prior art.
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`Though discovery to date has been limited, much more will be required soon absent a
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`stay. During the next six months, the parties in each of the eleven cases involving the ’290
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`patent will be required to exchange proposed claim constructions, serve expert reports (and
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`5 B.E. can choose to expedite the PTO’s decision by waiving its response. 37 C.F.R. §
`42.107(b).
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`rebuttal reports) on claim construction, and complete discovery and briefing on claim
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`construction, amongst other issues. (See D.E. 52.)
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`D.
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`The Parties’ Pre-Motion Discussions Regarding A Stay
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`B.E. and the defendants in the Related Actions have engaged in discussions regarding a
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`potential stay of these litigations for several weeks, and on November 22, B.E. and Samsung
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`formally met-and-conferred regarding the instant motion. (MacLean Decl. ¶ 2.) In the meet-
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`and-confer, the parties agreed to a stay of this case so long as all proceedings related to the ’290
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`and ’314 patents in the Related Actions are stayed. (Id.) Samsung has also discussed the stay
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`issue with the defendants in the Related Actions and, based on those discussions, Samsung
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`understands that most if not all of the defendants will either join in this request by moving to stay
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`their respective cases, or will not oppose a stay (perhaps based on one or more conditions). (Id. ¶
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`3.)6 However, Samsung understands that each defendant will advise the Court of its position on
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`the stay issue in its own submission to the Court.
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`III. ARGUMENT
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`A.
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`Legal Standard
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`The overarching goal of the Federal Rules of Civil Procedure is “to secure the just,
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`speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1. To
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`achieve this goal, “courts have inherent power to manage their dockets and stay proceedings,
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`including the authority to order a stay pending conclusion of a PTO reexamination.” Ethicon,
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`Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (citations omitted). “[T]here is a liberal
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`policy in favor of granting motions to stay proceedings” pending review of a patent by the PTO.
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`Equipements de Transformation IMAC v. Anheuser-Busch Cos., 559 F. Supp. 2d 809, 816 (E.D.
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`Mich. 2008) (quotation omitted), modified on reconsideration, 2008 WL 3852240 (E.D. Mich.
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`6 See supra note 2.
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`Aug. 18, 2008); see also Visual Interactive Phone Concepts, Inc. v. Samsung Telecommcn’s Am.,
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`LLC, 2012 WL 1049197, at *2 (E.D. Mich. Mar. 28, 2012). District courts in this circuit have
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`found that staying litigation pending the review of a patent’s validity by the PTO confers
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`numerous benefits on the court and parties, including:
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`1.
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`If the review results in the invalidity of the patent, the litigation as to that
`patent can be dismissed.
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`2. Many discovery problems relating to prior art can be alleviated by the
`PTO examination.
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`3.
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`4.
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`5.
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`The outcome of the PTO proceeding may encourage a settlement without
`the further use of the Court.
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`The record of the PTO proceeding would likely be entered at trial, thereby
`reducing the complexity and length of the litigation.
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`Issues, defenses, and evidence will be more easily limited in pre-trial
`conferences after the PTO proceeding.
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`6.
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`See Visual Interactive, 2012 WL 1049197, at *2; see also Dura Global Tech., LLC v. Magna
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`The cost will likely be reduced both for the parties and the Court.
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`Int’l Inc., 2011 WL 5039883, at *5 (E.D. Mich. Oct. 24, 2011).
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`Accordingly, courts in this circuit have frequently granted motions to stay pending PTO
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`review of a patent-in-suit. See One Stockduq Holdings, LLC v. Becton, Dickinson & Co., No.
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`2:12-cv-3037-JPM-tmp, D.E. 85 (W.D. Tenn. Nov. 12, 2013) (“Stockduq II”) (Ex. 6); SSW
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`Holding Co. v. Schott Gemtron Corp., 2013 WL 4500091 (W.D. Ky. Aug. 21, 2013); Regents of
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`the Univ. of Mich. v. St. Jude Med., Inc., 2013 WL 2393340 (E.D. Mich. May 31, 2013); Visual
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`Interactive, 2012 WL 1049197, at *1; Dura Global Tech., 2011 WL 5039883, at *1; EMSAT
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`Advanced v. T-Mobile USA, Inc., 2011 WL 843205, at *1 (N.D. Ohio Mar. 8, 2011); Lincoln
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`Elec. Co. v. Miller Elec. Mfg. Co., 2007 WL 2670039, at *1 (N.D. Ohio Sept. 7, 2007), stay
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`continued, 2011 WL 976587 (N.D. Ohio Mar. 17, 2011).This Court has applied a familiar three-
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`factor test previously used to determine whether to grant a stay pending the former inter partes
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`reexamination (“IPX”) procedure, requiring consideration of: “(1) whether a stay would unduly
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`prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will
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`simplify the issues in question and trial of the case; and (3) whether discovery is complete and
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`whether a trial date has been set.” Stockduq II, slip op. at 7.Here, all three of these factors weigh
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`in favor of a stay.
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`B.
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`The Present Litigation Should Be Stayed Pending Resolution Of The IPRs
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`1.
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`A Stay Will Simplify the Issues, Regardless of the Outcome of the
`IPRs
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`According to recent statistics, nearly 90% of all IPR petitions are granted. (Ex. 7,
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`showing only 33 of 239 decisions resulting in denials of IPR petitions through November 14,
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`2013.) In this case, five separate petitions have been filed against the ’290 patent. Statistically,
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`then, it is a near certainty that an IPR will be instituted on at least one of those five petitions.
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`It is also statistically likely that at least some of the challenged claims will be cancelled
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`by the PTO. As one court noted, “[i]f the PTO cancelled at least some of the challenged claims
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`in 89% of [the old] inter partes reexaminations, it seems likely that this percentage will be higher
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`in inter partes reviews.” Universal Elecs., Inc. v. Univ. Remote Control, Inc., 2013 WL
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`1876459, at *4 (C.D. Cal. May 2, 2013); see also Stockduq II, slip op. at 14-15 (“Amendment of
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`any claim could impact the litigation presently before the Court, and a majority of patents which
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`have been reexamined have either had all claims canceled or changes made to the claims.”)
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`(internal quotation omitted).
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`Of course, the actual outcome of the petitions cannot be known in advance. But
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`regardless of the outcome, a stay will simplify the issues, a conclusion with which B.E.
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`apparently agrees. There are three possible outcomes: the claims of the ’290 patent will be
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`cancelled; the claims of the ’290 patent will be changed; or the claims of the ’290 patent will
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`survive unchanged.
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`If the claims of the ’290 patent are cancelled or changed, staying the litigation is simplest
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`and most efficient path. “It is an indisputable waste of judicial resources to hold a Markman
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`hearing, rule on discovery and dispositive motions, and conduct a trial, all at great expense to the
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`parties, when the PTO’s decision could render these proceedings moot or substantially alter the
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`claims being litigated.” Visual Interactive, 2012 WL 1049197, at *4; see also e-Watch, Inc. v.
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`Lorex Canada, Inc., 2013 WL 5425298, at *2 (S.D. Tex. Sept. 26, 2013) (“[T]he continuation of
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`this litigation will likely result in the unnecessary expenditure of the parties’ and the court’s time
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`and resources on claims that may be fundamentally altered by the USPTO’s determination
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`regarding the patent[]-in-suit[.]”).
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`“Even if all claims are confirmed by the PTO, the record of the inter partes review will
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`assist this Court in reducing the length and complexity of this litigation and will limit what issues
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`are left to be resolved by this Court.” Stockduq II, slip op. at 15; see also e-Watch, 2013 WL
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`5425298, at *2 (“The USPTO’s insight and expertise regarding the validity of the patents would
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`be of invaluable assistance to this court”). Thus, “the outcome of the reexamination by the
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`USPTO, whether the IPRs are instituted or not, will in either event help simplify the issues in
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`this case.” e-Watch, 2013 WL 5425298, at *2. For instance, even in denying an IPR petition,
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`the PTO might find that even the “broadest reasonable construction” of the asserted claims
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`includes a requirement that is not present in the products accused of infringement. Such a
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`finding would preclude the possibility of infringement. See Garmin Int’l, Inc. v. Cuozzo Speed
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`Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 13 of 17 PageID 880
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`Techs. LLC, No. IPR2012-00001, Paper No. 15, at 7 (PTAB Jan. 9, 2013) (Ex. 8).7 In addition,
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`the PTO’s decision may provide the Court with guidance regarding other issues related to
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`invalidity, such as issues of indefiniteness. See Universal Remote Control, Inc. v. Universal
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`Elecs., Inc., No. IPR2013-00152, Paper No. 8, at 9-13, 20 (Aug. 19, 2013) (concluding a term at-
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`issue was indefinite) (Ex. 9).
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`For these reasons, this factor weighs in favor of a stay.
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`2.
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`Discovery Is Not Complete and No Trial Date Has Been Set
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`As stated above, this litigation is in an early stage. See Section II.C, supra. Claim
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`construction exchanges have just begun, and the claim construction hearing is scheduled for
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`April 28, 2014. Minimal fact discovery has been provided to date, with the close of fact
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`discovery likely a year or more away. (D.E. 52 (scheduling fact discovery cutoff for 120 days
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`after the Court issues a claim construction ruling).) No trial date has been set, nor has a date for
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`dispositive motions. In sum, “there is more work ahead of the parties and the Court than behind
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`the parties and the Court.” Semiconductor Energy Lab. Co. v. Chimei Innolux Corp., 2012 WL
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`7170593, at *2 (C.D. Cal. Dec. 19, 2012). Given B.E.’s position that it would not oppose a stay
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`of the ’290 (and ’314) patent-related actions, B.E. apparently agrees that the litigation is not
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`sufficiently advanced to warrant denial of a stay. This Court has granted a stay in instances
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`where litigation was much more advanced. See Stockduq II, slip op. at 17 (granting stay where
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`“claim construction [was] fully briefed and set for resolution”). Thus, this factor also weighs in
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`favor of a stay.
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`7 “The PTO is required to use a different standard for construing claims than that used by district
`courts. During initial patent examinations as well as in reexaminations, the PTO must give
`claims their broadest reasonable construction consistent with the specifications. In contrast, in
`an infringement action, a district court seeks to apply the ‘proper’ construction; that is, the court
`construes the patent claims in a manner that most naturally aligns with the patent’s description of
`the invention.” Geospan Corp. v. Pictometry Int’l Corp., 2012 WL 5942005, at *5 (D. Minn.
`Nov. 28, 2012) (internal quotation marks and citations omitted).
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`Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 14 of 17 PageID 881
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`3.
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`B.E. Will Not Be Unduly Prejudiced By A Stay
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`A stay of this litigation pending the IPRs will not prejudice B.E. In fact, B.E. apparently
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`claims no prejudice since it is agreeable to staying this and the other litigations. This is because
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`the litigation will not be unduly delayed if a stay is granted. Any delay would be relatively
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`short—12 to 18 months from the institution of the IPR, as compared with an average of 37
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`months under the old IPX procedure. See Software Rights Archive, 2013 WL 5225522, at *2;
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`Semiconductor Energy, 2012 WL 7170593, at *3 (“[T]he delay caused by the new IPR procedure
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`is significantly less than the delay caused by the old procedure[.]”). Indeed, “[w]hile a stay to
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`allow the inter partes review to proceed will undeniably delay the instant litigation, delay based
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`on the inter partes review process alone is not sufficient to demonstrate undue prejudice to the
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`non-moving party.” Stockduq II, slip op. at 10. Moreover, any prejudice that could result from
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`the delay is “outweighed by the benefits of the stay, including the benefit of the Court having the
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`record of the inter partes review proceeding….” Id. at 11.
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`Nor can B.E. claim prejudice from a purported loss of market share during the brief stay
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`as B.E. does not compete with Samsung or any of the defendants. B.E. exists solely to enforce
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`its patent rights (see D.E. 27-8, statement from B.E.’s attorney that B.E. was “formed …
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`expressly to enforce these patents”). Thus, monetary damages will be B.E.’s only remedy and
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`those damages will cover whatever infringement is found during the stay. Software Rights
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`Archive, 2013 WL 5225522, at *6; see also Visual Interactive, 2012 WL 1049197, at *3.
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`The lack of any prejudice to B.E. is also demonstrated by the fact that, while the ’290
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`patent issued in 2004, B.E. did not begin to assert its patent rights until nearly a decade later. On
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`the other hand, Samsung filed its IPR petition within the time period prescribed by the statute,
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`which is reasonable, see Software Rights Archive, 2013 WL 5225522, at *6, and the defendants
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`Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 15 of 17 PageID 882
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`in the Related Actions began discussions with B.E. regarding a joint stay request only one week
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`later.8
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`C.
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`A Stay Should Be Granted Now: There Is No Need To Wait For The Patent
`Office’s Decision To Institute An IPR
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`Samsung is aware that this Court has denied as premature a motion to stay pending
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`completion of an IPR when the IPR request was filed but not yet granted. In its decision, the
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`Court reasoned that: (1) “the PTO has not yet granted Defendant’s Petition for reexamination and
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`it is possible that the PTO will never grant Defendant’s petition”; (2) “staying the case at this
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`juncture could result in an unnecessary delay of six[] months if the PTO does not grant
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`reexamination of the … Patent”; and (3) “this case is at an early stage of litigation and, as a
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`result, there is little risk of overlap between the instant litigation and the PTO reexamination
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`process.” See One Stockduq Holding, LLC v. Becton, Dickinson & Co., No. 2:12-cv-03037-
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`JPM-tmp, D.E. 53, slip op. at 3-4 (W.D. Tenn. May 6, 2013) (“Stockduq I”) (Ex. 10).
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`This reasoning does not apply here. Initially, as discussed above, B.E. is not opposed to a
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`stay, thereby indicating its belief that a grant of at least one of the IPR petitions is likely. This is
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`because, in this case, there have been five separate IPR petitions filed on different groupings of
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`prior art, whereas in Stockduq I, only a single IPR was filed. As explained above, this makes it
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`statistically almost certain that the PTO will grant at least one of the five IPR petitions before it.
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`See Section III.B.1, supra. Moreover, in this case there is a substantial risk of overlap and
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`unnecessary proceedings if the litigations against Samsung are not stayed pending the PTO’s
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`decision on whether to institute an IPR. During that time, the parties will be required to
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`exchange proposed claim constructions, serve expert reports (and rebuttal reports) on claim
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`8 Although this Motion is not being filed as a joint motion, it cannot be said that Samsung moves
`for a stay in order to gain a tactical advantage since B.E. has indicated that it supports a stay so
`long as all the related litigations involving the ‘290 Patent and the ‘314 Patent are also stayed.
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`Case 2:12-cv-02825-JPM-tmp Document 66-1 Filed 11/22/13 Page 16 of 17 PageID 883
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`construction, and complete discovery and briefing on claim construction. (See D.E. 52.) The
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`parties and the Court will also have to otherwise prepare for the claim construction hearing
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`scheduled for April 28, 2014. (Id.) In all, the timing of the instant motion in relation to the tasks
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`facing the parties, the Court, and the PTO more closely resembles that of Stockduq II than
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`Stockduq I. Thus, any delay caused by a brief stay is far outweighed by the significant savings in
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`resources of both the parties and the Court that would result if one or more of the petitions a