Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 1 of 8 PageID #: 9469
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CASE NO. 2:21-cv-00040-JRG
`(Lead Case)
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`JURY TRIAL DEMANDED
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`CASE NO. 2:21-cv-00041-JRG
`(Member Case)
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`JURY TRIAL DEMANDED
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`GESTURE TECHNOLOGY
`PARTNERS, LLC,
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`Plaintiff
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`v.
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`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
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`Defendants.
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`GESTURE TECHNOLOGY
`PARTNERS, LLC,
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`Plaintiff
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Defendants.
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`SAMSUNG DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION TO STAY
`PENDING INTER PARTES REVIEW AND EX PARTE REEXAMINATION
`PROCEEDINGS
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 2 of 8 PageID #: 9470
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`I.
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`INTRODUCTION
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`Since Samsung filed its Motion to Stay on December 21, 2021, the USPTO has additionally
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`instituted Samsung’s EPRs as to the ’079 and ’431 Patents. Exs. 16, 17. This means the USPTO
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`has now instituted Apple’s IPRs covering all claims of the Patents-in-Suit, and has instituted
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`Samsung’s EPRs covering all asserted claims of the Patents-in-Suit. It is very likely that a stay of
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`this case pending conclusion of these USPTO proceedings will conserve the Court’s and the
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`parties’ resources by simplifying the issues.1 It is highly likely at least some asserted claims will
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`be declared invalid, and there is a “reasonable likelihood” that all asserted claims will be declared
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`invalid. Either way, the issues will be simplified, and perhaps significantly so. GTP’s opposition
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`seeks to minimize this eventuality, but this reality cannot be disputed. Moreover, GTP has failed
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`to show “undue” burden or “unfair” prejudice sufficient to outweigh the other factors all favoring
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`a stay under the circumstances. Samsung respectfully requests that the Court stay this case pending
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`resolution of the Apple IPRs and Samsung EPRs.
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`II.
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`ARGUMENT
`A.
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`Factor 1 – GTP Has Not Articulated Any Undue Burden or Unfair Prejudice
`That Would Result From a Stay
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`GTP’s complaint of prejudice carries little weight. It is undisputed that Dr. Pryor claims
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`to have discovered the alleged infringement in 2014 but waited seven years—until the Patents-in-
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`Suit had expired—before filing this action in 2021. GTP’s seven-year delay is the opposite of
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`“timely enforcement.” Opp. at 4. Any claimed prejudice to GTP associated with delaying trial to
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`1 In addition to the Apple IPRs and Samsung EPRs, the PTAB has instituted Unified Patents’ IPR
`Petition as to the ’431 Patent. Unified Patents, LLC v. Gesture Technology Partners, LLC, IPR
`No. 2021-00917. Also, LG Electronics and Google both filed IPR Petitions and requests to join
`the Apple IPRs. LG Electronics, Inc. et al v. Gesture Technology Partners, LLC, IPR Nos. 2021-
`01255, 2022-0093, 2022-00091, and 2022-00090; Google LLC v. Gesture Technology Partners,
`LLC, IPR Nos. 2022-00359, 2022-00360, 2022-00361, and 2022-00362.
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`-1-
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 3 of 8 PageID #: 9471
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`allow the USPTO to do its important work is of GTP’s own making and does not rise to the level
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`of undue burden or unfair prejudice. The factual record belies GTP’s argument that it would be
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`prejudiced from delaying “its long-awaited day in court.” Opp. at 5.2
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`GTP additionally argues that it would suffer prejudice because a “jury could likely equate
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`the period of expiration with a lack of value in the patent” and that the Court should consider Dr.
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`Pryor’s age. Opp. at 5. But the patents have already expired, so denying Samsung’s motion does
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`not resolve GTP’s purported concern. Further, GTP’s “octogenarian” argument was offered and
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`rejected in parallel litigation. See Gesture Technology Partners, LLC v. Apple Inc., No. 6:21-cv-
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`00121-ADA, Dkt. 39 (“Dr. Pryor’s seniority also militates in favor of denying the Motion.”); id.
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`Dkt. 41 (granting motion to stay pending IPR). That argument should also fail here.
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`Finally, GTP’s assertion that it will be prejudiced because Samsung will gain the benefit
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`of a stay without expending resources is a red herring. See Opp. at 5. Conserving party resources,
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`including Samsung’s resources, is obviously a key benefit of a stay. GTP’s opposition clouds the
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`appropriate inquiry, which is whether GTP will be unfairly prejudiced. It will not. Regardless of
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`whether the Court grants a stay, GTP will expend resources in the USPTO proceedings. A stay
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`does not change this fact. In totality, this factor favors a stay.
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`B.
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`Factor 2  A Stay Will Likely Avoid Significant Pre-Trial, Trial, and Post-
`Trial Expenditures
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`Significant and burdensome milestones lie ahead for the Court and the parties in this case.
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`The substantial remaining work with respect to pre-trial, trial, and post-trial matters will impose
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`2 Samsung acknowledges that GTP may be prejudiced in the event GTP ultimately demonstrates
`it is entitled to monetary damages and is delayed in collecting those damages. See Order at 3 n.1,
`Garrity Power Servs. LLC v. Samsung Elecs. Co., No. 2:20-cv-269 (E.D. Tex. Dec. 10, 2021),
`Dkt. No. 227. Samsung respectfully submits that, in light of the particular facts of this case, such
`delay will not be unfairly prejudicial. Cf. Invensys Sys., Inc. v. Emerson Elec. Co., No. 6:12-cv-
`00799, 2014 WL 4477393, at *2 (E.D. Tex. July 25, 2014) (“This delay is especially burdensome
`where, like here, the parties are competitors in the marketplace.”)
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`-2-
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 4 of 8 PageID #: 9472
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`“significant expenses on the parties that might be avoided if the stay results in the simplification
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`(or obviation) of further court proceedings.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-
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`01058-WCB, 2015 WL 1069111, at *3 (E.D. Tex. Mar. 11, 2015). Indeed, this Court has stayed
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`cases less than a month from the trial setting in recognition of this reality. See Image Processing
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`Techs., LLC v. Samsung Elecs. Co., No. 2:16-cv-505-JRG, 2017 WL 7051628 (E.D. Tex. Oct. 25,
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`2017) (granting stay after pretrial conference); Customedia Techs., LLC v. Dish Network Corp.,
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`No. 2:16-CV-129-JRG, 2017 WL 3836123 (E.D. Tex. Aug. 9, 2017) (granting stay less than a
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`week before pretrial conference).
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`Notably, it is very possible, if not inevitable, that the upcoming stages of this litigation will
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`require a greater expenditure of resources than the Court and the parties have already incurred.
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`Presently, there are nearly twenty motions on the Court’s docket for resolution, most of which
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`have the potential to significantly impact on the scope of the case. See Dkt. Nos. 23, 51, 76, 84,
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`94, 99, 100, 107, 128, 133–140. Cf. USC IP Partnership, L.P. v. Facebook, Inc., No. 6:20-CV-
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`00555-ADA, 2021 WL 6201200, at *2 (W.D. Tex. Aug. 5, 2021) (“If the court has expended
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`significant resources, then courts have found that this factor weighs against a stay.”) (citation
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`omitted). A number of these outstanding motions have the potential to significantly expand the
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`scope of the case, necessitating expenditure of still more Court and party resources. For example,
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`depending on the Court’s rulings on Samsung’s Motion to Dismiss (Dkt. 23), Motion to Strike
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`(Dkt. 51), and Motion for Protective Order (Dkt. 92), and GTP’s Motion to Compel (Dkt. 99), the
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`number of accused features at issue could more than double. This would, in turn, likely require
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`re-opening fact discovery, further expert discovery, further motion practice, further pretrial
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`disclosures, etc.—essentially the bulk of an entirely new action concerning the contested features.
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`Similarly, if the Court were to deny Samsung’s Motion to Strike (Dkt. No. 133), that would warrant
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`-3-
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 5 of 8 PageID #: 9473
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`supplemental rebuttal expert reports, further expert depositions, further motion practice, etc.
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`Either of these scenarios would also likely warrant continuance of the trial. GTP’s claim that
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`“nearly all of the heavy lifting of this case is already complete” ignores this reality. Opp. at 6.
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`A stay will conserve significant Court and party resources, favoring a stay.
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`C.
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`Factor 3  The IPR and EPR Proceedings Will Simplify the Issues
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`This case is fertile ground for “the ultimate simplification of issues.” See VirtualAgility
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`Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1314 (Fed. Cir. 2014) (“[W]here [USPTO] review has
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`been granted on all claims of the only patent at issue, the simplification factor weighs heavily in
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`favor of the stay.”). It is therefore no surprise that this Court has found simplification of issues in
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`circumstances less clear-cut than those here. See, e.g., AGIS Software Dev. LLC v. Google LLC,
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`No. 2:19-cv-00361-JRG, 2021 WL 465424, at *3 (E.D. Tex. Feb. 9, 2021) (granting stay where
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`USPTO denied institution of IPRs but granted institution of EPRs) (“[W]here the PTAB has
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`instituted IPR proceedings or the PTO has granted EPR’s as to all claims of all asserted patents,
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`this Court has likewise routinely stayed cases because the Court there does not retain before it any
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`intact (as originally asserted) claims that are ready to move forward toward trial”) (emphasis in
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`original). Further, GTP’s opposition does nothing to refute the reasoning in Spa Syspatronic, AG
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`v. Verifone, Inc. that even without estoppel, the USPTO’s institution of post-grant review weighed
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`in favor of a stay. No. 2:07-cv-416, 2008 WL 1886020, at *3 (E.D. Tex. Apr. 25, 2008).
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`In addition, GTP’s opposition misstates the applicable legal standard, arguing that a stay
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`must “assuredly” simplify the issues. Opp. at 7. The correct standard, however, is whether it is
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`“likely” the asserted claims will be declared invalid. Scorpcast LLC v. Boutique Media, No. 2:20-
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`cv-00193-JRG-RSP, 2021 WL 3514751, at *3 (E.D. Tex. June 7, 2021) (emphasis added).
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`Samsung has met that standard. Here, like in Scorpcast, the PTAB granted institution “on more
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`than one asserted ground, indeed several different grounds.” Id. In doing so, the PTAB provided
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`-4-
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 6 of 8 PageID #: 9474
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`detailed analysis rejecting GTP’s positions and explaining why the asserted claims are likely to be
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`found invalid. See Mot., Ex. 1 at 10–16; id., Ex. 2 at 16–20, 24–26; id., Ex. 3 at 16–22; id., Ex. 4
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`at 16–17, 19; id., Ex. 5 at 15–22, 24. GTP argues that “[t]he PTAB did the exact opposite” of
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`setting forth a strong showing of invalidity because it has not yet issued final determinations. Opp.
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`at 11 (emphasis in original). This argument is readily dismissed, as the PTAB made an unusually
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`strong showing of invalidity in this instance, and the PTAB’s decision to institute an IPR is never
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`a “final determination.”
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`Finally, every asserted claim here is likely to be declared invalid on multiple independent
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`grounds, based on different prior art. The primary prior art references in the IPRs are different
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`from those in the EPRs. This Court has found that institution on multiple independent grounds
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`indicates the asserted claims are likely to be found unpatentable and is a factor supporting stay.
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`See Scorpcast, 2021 WL 3514751, at *3 (finding PTAB’s institution based on multiple grounds
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`“in essence, indicated that the asserted claims are likely unpatentable”). Finally, USPTO statistics
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`for fiscal year 2021, see Opp. at 9, further show that simplification of the issues is very likely in
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`this case. For IPRs, of 395 final written decisions, 311—78%—found all or some claims invalid.
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`Opp., Ex. 2 at 11 (“Outcomes by petition”). Almost identically for EPRs initiated by third parties,
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`79% found all or some claims invalid. Mot., Ex. 14 at 2. These facts undermine GTP’s arguments
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`that the petitions have “no better than a 50/50 chance.” Opp. at 10. Finally, because the Patents-
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`in-Suit are expired, there is no possibility for the claims to be amended to avoid prior art, further
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`increasing the likelihood of invalidity here. See 37 C.F.R. § 1.530(j) (“No amendment may be
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`proposed for entry in an expired patent.”). This factor also weighs in favor of a stay.
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`III. CONCLUSION
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`Because all factors favor a stay, Samsung respectfully requests that the Court stay this case
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`pending resolution of the Apple IPRs and Samsung EPRs.
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`-5-
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 7 of 8 PageID #: 9475
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`DATED: January 11, 2022
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`Respectfully submitted,
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`
`By: /s/ Christopher W. Kennerly
`Christopher W. Kennerly (TX Bar No. 00795077)
`chriskennerly@paulhastings.com
`Radhesh Devendran (pro hac vice)
`radheshdevendran@paulhastings.com
`Boris S. Lubarsky (pro hac vice)
`borislubarsky@paulhastings.com
`David M. Fox (pro hac vice)
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Allan M. Soobert
`allansoobert@paulhastings.com
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`Telephone: 202-551-1700
`Facsimile: 202-551-1705
`
`Elizabeth L. Brann
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Robert Laurenzi
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Harry Lee Gillam, Jr. (TX Bar No. 07921800)
`gil@gillamsmithlaw.com
`Melissa R. Smith (TX Bar No. 24001351)
`melissa@gillamsmithlaw.com
`James Travis Underwood (TX Bar No. 24102587)
`travis@gillamsmithlaw.com
`
`-6-
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`Case 2:21-cv-00040-JRG Document 199 Filed 01/11/22 Page 8 of 8 PageID #: 9476
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`GILLAM & SMITH, LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Attorneys for Defendants Samsung Electronics
`Co., Ltd and Samsung Electronics America, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing document was filed
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`
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`electronically in compliance with Local Rule CV-5 on January 11, 2022. As of this date, all
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`counsel of record had consented to electronic service and are being served with a copy of this
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`document through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A).
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` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
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`-7-
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