Case 2:12-cv-02831-JPM-tmp Document 64 Filed 12/05/13 Page 1 of 6 PageID 859
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 2:12-cv-02831-JPM-tmp
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`APPLE INC.'S NOTICE TO THE COURT REGARDING
`MOTIONS TO STAY FILED IN RELATED LITIGATIONS
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`In September 2012, B.E. Technology, L.L.C. (“B.E”) sued 19 separate defendants in
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`actions before this Court (the “Related Actions”).1 In each of those cases, B.E. asserted one or
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`more of U.S. Patent Nos. 6,628,314 (the “’314 patent”) and 6,771, 290 (the “’290 patent”),
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`each of which claim priority to U.S. Patent No. 6,141,010, which B.E. also asserted but only in
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`its case against Amazon. Both the ‘314 and ‘290 patents are asserted against Apple. After the
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`Related Actions were instituted, several defendants (the “IPR Filers”) elected to file petitions
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`for inter partes review (“IPR”) with the United States Patent & Trademark Office (“USPTO”).
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`To date, at least Groupon, Samsung, and Facebook have filed motions to stay their respective
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`1 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.
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`Case 2:12-cv-02831-JPM-tmp Document 64 Filed 12/05/13 Page 2 of 6 PageID 860
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`cases pending resolution of the pending IPRs.2 In each of those motions, the proponent asks
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`the Court to stay not only its own case, and not only the cases of the other IPR Filers, but also
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`the cases B.E. has filed against parties who have not filed and, to Apple’s knowledge, did not
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`participate in the IPRs. In essence, each of the parties seeking a stay is advocating that
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`because it chose to file an IPR, that decision should determine the choice of forum for every
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`other defendants’ invalidity case, i.e. whether invalidity should be tried before the USPTO or
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`before this Court. Those defendants are, in substance, asking the Court to stay, sua sponte, the
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`litigation between B.E. and Apple even though neither Apple nor B.E. have requested a stay of
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`that case.
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`Because Apple does not have a procedural mechanism for filing a response to the stay
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`motions in those Related Cases, Apple submits this Notice to the Court, to clarify its position.
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`In short, Apple does not oppose a stay of all the cases, to the extent that such a stay
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`does not prejudice Apple’s rights to mount a full invalidity defense, including the ability to use
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`prior art references that were used in the IPRs. Although Apple has not sought a stay in its
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`own case, it recognizes that the IPR Filers and most or all of the other defendants will either
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`seek, or not oppose, a stay of their own cases pending resolution of the IPRs. When it became
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`apparent that a majority of the other defendants were interested in having their cases stayed,
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`Apple agreed to talk to B.E.’s counsel about whether Apple would agree to join in a stay
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`motion in order to avoid a situation in which B.E. might not agree to a stay of less than all the
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`cases.
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`A “meet and confer” call took place on or around November 1, 2013, between counsel
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`for B.E., Apple and Samsung. At that time, Apple conveyed its position that it did not plan to
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`2 Samsung and Facebook were among the IPR Filers along with Google and Microsoft. Groupon
`and the remaining defendants did not file nor participate, to Apple’s knowledge, in any the IPR
`Petitions, but Groupon did file a motion to stay its case.
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`Case 2:12-cv-02831-JPM-tmp Document 64 Filed 12/05/13 Page 3 of 6 PageID 861
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`seek a stay, but would not actively oppose a stay of its case if the other defendants and B.E.
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`wanted one, as long as its own invalidity case would not be prejudiced in any way should the
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`IPR Filers fail to have the patents invalidated before the USPTO. During that call, Apple
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`confirmed, repeatedly, that it is not in privity with any of the IPR filers and, therefore, any
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`prior art estoppel that might apply under 35 U.S.C. § 315(e) should not apply to Apple. Apple
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`confirmed that it is not a participant in any of the IPRs. Apple had no role in drafting the
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`petitions, formulating claim construction positions, choosing the submitted prior art, or
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`providing any form of funding or other support for the IPRs. B.E.’s counsel asked whether
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`Apple’s counsel would be willing to confirm that in writing, and Apple’s counsel agreed that
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`he would be willing to provide a written statement or declaration to that effect. Based on those
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`communications, it appeared that B.E. likely would be willing to agree that, if the written
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`verification were provided, B.E. would agree that Apple would not be in privity and would not
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`be estopped from using any prior art submitted in the IPRs.
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`Shortly after that “meet and confer,” and presumably after counsel for B.E. conferred
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`with their client, B.E.’s counsel stated that B.E. would not agree to “waive its rights” under 35
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`U.S.C. § 315(e). While Apple does not fully understand the reasoning behind B.E.’s position,
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`based on statements by their counsel it appears to hinge on a hope that the law will develop in a
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`direction that would allow B.E. to argue at some future time that a defendant may be in privity
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`with an IPR-filing defendant in a related case by virtue of something like participating in a joint
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`defense group. Although B.E. does not appear to contest the fact of Apple’s non-participation in
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`the IPRs, to date B.E.’s only concession on this issue is that it will not argue that joining in a stay
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`motion will, in and of itself, establish privity. Notably, B.E. has not confirmed that it will not
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`argue that joining such a motion can be one part of the estoppel analysis or that it will not argue
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`Case 2:12-cv-02831-JPM-tmp Document 64 Filed 12/05/13 Page 4 of 6 PageID 862
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`that the Court should require some form of estoppel as a condition of granting a stay covering all
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`the cases.
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`Samsung and the other IPR filers that have sought stays have argued that it may be
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`efficient for the Court to stay all the cases until the termination of the IPRs. That may very
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`well be the case and, for that reason, Apple is not opposed to such a stay. But, it also is
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`evident that part of the motivation for arguing that all the cases should be stayed is that
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`Samsung is concerned that if other parties are allowed to continue litigating issues such as
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`claim construction in Samsung’s absence, then Samsung’s own positions might be prejudiced
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`in the litigation if its IPR proves unsuccessful. While Samsung’s stay motion professed a lack
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`of understanding of Apple’s position, that position is quite similar to Samsung’s own. Just as
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`Samsung no doubt wants to ensure that its rights are not prejudiced by litigation in which it
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`may not be participating going forward, Apple is not playing any role in the IPRs and is not
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`willing to simply hand over its 35 U.S.C. §§102 and 103 invalidity case to some of its co-
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`defendants to litigate before the USPTO.
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`Therefore, although Apple does not plan to seek a stay in its own action, Apple will not
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`oppose a stay across all cases to the extent such a stay is sought by the other defendants or B.E.,
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`so long as Apple is not estopped from using any of the prior art that was submitted in the IPRs
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`or included in Apple’s invalidity contentions.
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`Case 2:12-cv-02831-JPM-tmp Document 64 Filed 12/05/13 Page 5 of 6 PageID 863
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`Dated: December 5, 2013
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`Respectfully submitted,
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`/s/ Clayton James
`Clayton James
`Lucky Vidmar
`Hogan Lovells US LLP
`One Tabor Center
`1200 Seventeenth St.
`Suite 1500
`Denver, CO 80203
`Clay.james@hoganlovells.com
`Lucky.vidmar@hoganlovells.com
`303-899-7300
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`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`Case 2:12-cv-02831-JPM-tmp Document 64 Filed 12/05/13 Page 6 of 6 PageID 864
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and the Local Rules, I hereby certify
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`that all counsel of record who have appeared in this case are being served today with a copy
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`of the foregoing via electronic mail.
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`Dated: December 5, 2013
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`/s/ C. Matthew Rozier
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