Case 2:21-cv-00040-JRG Document 204 Filed 01/19/22 Page 1 of 6 PageID #: 9555
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:21-CV-00040-JRG
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`(LEAD CASE)
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`CIVIL ACTION NO. 2:21-CV-00041-JRG
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`(CONSOLIDATED CASE)
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`ORDER
`Before the Court is the Defendants Samsung Electronics Co., Ltd. and Samsung Electronics
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`GESTURE TECHNOLOGY PARTNERS,
`LLC,
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`v.
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`HUAWEI DEVICE CO., LTD., HUAWEI
`DEVICE USA INC.,
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Plaintiff,
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`Defendants.
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`Defendants.
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`America, Inc.’s Motion to Stay Pending Inter Partes Review and Ex Parte Reexamination
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`Proceedings (Dkt. No. 157) (the “Motion”). In the Motion, the Defendants Samsung Electronics
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`Co., Ltd. and Samsung Electronics America, Inc. (“Samsung”) request the Court stay the above-
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`captioned case pending completion of ongoing ex parte reexamination and inter partes review
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`proceedings before the United States Patent and Trademark Office.
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`Having considered the Motion, the associated briefing, and for the reasons set forth below,
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`the Court finds that the Motion should be DENIED.
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`I.
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`BACKGROUND
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`Plaintiff Gesture Technology Partners, LLC (“Gesture”) filed the above-captioned suit
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`against Samsung on February 4, 2021, alleging infringement of U.S. Pat. Nos. 8,194,924 (the “’924
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`1
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`Case 2:21-cv-00040-JRG Document 204 Filed 01/19/22 Page 2 of 6 PageID #: 9556
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`Patent”); 7,933,431 (the “’431 Patent”); 8,878,949 (the “’949 Patent”); and 8,553,079 (the “’079
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`Patent”) (collectively, the “Asserted Patents”). (Case No. 2:21-cv-41, Dkt. No. 1.) Gesture alleged
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`that Samsung’s smartphones and tablets, including the Samsung Galaxy Note Series, S Series, Z
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`Series, A Series, M Series, Galaxy Tab S7/7+, S6, S5, and S4 products infringe certain claims of
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`the Asserted Patents.
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`On November 22, 2021, the Patent Trial and Appeal Board (“PTAB”) instituted an inter
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`partes review (“IPR”) proceeding petitioned by Unified Patents as to a portion of the asserted
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`claims of the ’431 Patent. On November 29, 2021, the PTAB instituted an IPR proceeding
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`petitioned by Apple, Inc. (“Apple”) as to the asserted claims of the ’079 Patent. On December 6,
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`2021, the PTAB instituted an IPR proceedings petitioned by Apple as to all asserted claims of the
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`’431 Patent and all asserted claims of the ’924 Patent. Finally, on December 13, 2021, the PTAB
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`instituted an IPR proceeding petitioned by Apple as to all asserted claims of the ’494 Patent.
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`Samsung is not a party to any of the instituted IPR proceedings related to the Asserted
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`Patents. However, on November 11, 2021, Samsung filed four ex parte reexamination (“EPR”)
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`requests with the United States Patent and Trademark Office (“PTO”) requesting the PTO reopen
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`prosecution of the Asserted Patents in light of substantial new questions of patentability. On
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`December 2, 2021, the PTO granted Samsung’s request as to the ’924 and ’949 Patents. On
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`December 20, 2021, and January 11, 2022, the PTO granted Samsung’s requests as to the ’079 and
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`’431 Patents, respectively.
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`II.
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`LEGAL STANDARD
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`“A district court has the inherent power to control its own docket, including the power to
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`stay proceedings before it.” Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd., 2016 WL
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`1162162, at *1 (E.D. Tex. Mar. 23, 2016). “In deciding whether to stay litigation pending
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`2
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`Case 2:21-cv-00040-JRG Document 204 Filed 01/19/22 Page 3 of 6 PageID #: 9557
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`reexamination, courts typically consider: (1) whether a stay will unduly prejudice or present a clear
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`tactical disadvantage to the nonmoving party, (2) whether a stay will simplify the issues in question
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`and trial of the case, and (3) whether discovery is complete and whether a trial date has been set.”
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`Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex. 2005).
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`The Court may grant a stay where “the outcome of a PTO proceeding is likely to assist the
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`court in determining patent validity or eliminate the need to try infringement issues.” NFC Tech.
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`LLC v. HTC Am., 2015 WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015). However, in a proceeding
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`such as an IPR or an EPR, the Court will not stay a case “based solely on speculation of what
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`might possibly happen,” because such a stay “would be inefficient and inappropriate.” Ramot at
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`Tel Aviv Univ. Ltd. v. Cisco Sys., No. 2:19-CV-00225, Dkt. No. 205 at 4 (E.D. Tex. Nov. 23, 2020);
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`see also Soverain, 356 F.Supp.2d at 662. With regard to EPR proceedings, before an Office Action
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`of any kind has issued in the proceeding, “the potential to simplify the issues in question and the
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`trial. . . is [] more speculative than factual.” Ramot, No. 2:19-CV-00225, Dkt. No. 205 at 4
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`(emphasis in original). Regarding IPR proceedings, where the party seeking the stay is not a party
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`to the IPR—and has not agreed to be estopped in a manner equivalent to a party to the IPR—the
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`issue simplification factor does not favor a stay. Intell. Ventures II LLC v. Kemper Corp., No.
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`6:16-CV-0081, 2016 WL 7634422, at *3 (E.D. Tex. Nov. 7, 2016) (finding the issue simplification
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`factor “neutral or weigh[ing] slightly against a stay” where the movant did not agree to be bound
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`by “full statutory estoppel”).
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`III. ANALYSIS
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`Samsung contends that all of the factors to be considered by the Court favor granting a stay
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`in this case because all of the asserted claims case are subject to instituted IPR proceedings and
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`prosecution of all asserted claims has been reopened subject to EPR proceedings.
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`3
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`First, Samsung argues that Gesture will not be unduly prejudiced by a stay because Gesture
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`does not practice any of the Asserted Patent or compete with Samsung in the marketplace and all
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`four Assert Patents expired before the case began. Samsung also contends that it would be
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`prejudiced by the denial of a stay because it will “incur the burden and expense of defending
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`infringement allegations on patent claims that may and likely will be invalidated in one or more
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`of the pending IPRs and/or EPRs.” (Dkt. No. 157 at 5.) Lastly, Samsung argues that Gesture’s
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`“delay in filing the present action belies any purported prejudice” because it allegedly waited seven
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`years to file the present action after it “became concerned about Samsung’s alleged infringement
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`in 2014.” (Id. at 6.) Gesture responds that it would be unduly prejudiced by a stay in this case
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`because “the timely enforcement of its patent rights is entitled to some weight, even if that factor
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`is not dispositive.” Intell. Ventures I LLC v. T Mobile USA, Inc., No. 2:17-CV-00577-JRG, 2018
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`WL 11363370, at *2 (E.D. Tex. Dec. 13, 2018). Gesture also cites the advanced age of the
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`inventor of the Asserted Patents and sole member of Gesture as weighing against a stay because
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`the EPR and IPR proceedings could go on for several years. (Dkt. No. 186 at 5.)
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`Samsung next argues that a stay in this case will conserve judicial resources because “the
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`parties and the Court will be required to expend significant additional resources in the immediate
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`future and over the coming months on pretrial, trial, and post-trial efforts, both in the district court
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`and potentially on appeal.” (Dkt. No. 157 at 6) Gesture responds that the case is already in a very
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`advanced stage, i.e., “[c]laim construction is completed, fact discovery is complete, expert reports
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`have been served, the experts were deposed, and the parties have filed Daubert challenges and
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`dispositive motions.” (Dkt. No. 186 at 6.) Gesture argues that it would be inappropriate and
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`inefficient to stay a case when “nearly all of the heavy lifting in this case is already complete, trial
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`preparation is underway, and the trial is just over two months hence.” (Id.)
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`Finally, Samsung contends that a stay will simplify the issues in this case because
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`“[s]tatistically, it is undeniable that the IPRs and/or EPRs are likely to invalidate most if not all
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`asserted claims of the Patents-in-Suit.” (Dkt. No. 157. at 8.) Samsung does not dispute that it will
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`not be subject to any estoppel resulting from the either proceedings, instead arguing that “the high
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`likelihood of simplification as a consequence of claim invalidation nonetheless warrants a stay.”
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`(Id. at 9.) Gesture responds that any simplification at this point is purely speculative. Gesture
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`argues that the IPR proceedings do not favor a stay because “Samsung is not estopped from
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`challenging the validity of the asserted claims on the grounds that were raised or could have
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`reasonably been raised in Apple’s inter partes reviews.” (Id.) Regarding the EPR proceedings,
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`Gesture also notes that such proceedings do not trigger any estoppel. Gesture further contends any
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`simplification that could arise from the EPR is purely speculative at this point because the
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`proceedings are “far from complete.” (Id. at 10)
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`The Court agrees with Gesture. With regard to the IPR proceedings, Gesture is correct that
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`the absence of any estoppel binding on Samsung as a result of those proceedings renders the issue
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`simplification factor either neutral or slightly against a stay. Likewise, for the EPR proceedings,
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`Samsung’s motion is at best premature. While Samsung has informed the Court that EPR requests
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`were granted as to all four Asserted Patents, it does not report that any Office Actions have issued
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`rejecting any of the asserted claims. It is particularly true that, prior to an Office Action issuing
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`which rejects some or all of the asserted claims, any potential simplification of the issues is far too
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`speculative to favor granting a stay.1
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`1 The Court further notes that a stay is not guaranteed even in the event that an Office Action does issue, particularly
`in a case as advanced as this. See Longhorn HD LLC. v. NetScout Sys., Inc., No. 2:20-CV-00349-JRG, 2022 WL
`71652, at *3 (E.D. Tex. Jan. 6, 2022).
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`Case 2:21-cv-00040-JRG Document 204 Filed 01/19/22 Page 6 of 6 PageID #: 9560
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`The Court concludes that the remaining factors are neutral or slightly disfavor a stay. While
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`Gesture is correct that it is likely to suffer some prejudice from a delay in potentially enforcing its
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`patent rights, such considerations alone are not sufficient to warrant a stay. Similarly, the stage of
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`this case—with pretrial motions having been filed and briefing complete, but the pretrial
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`conference yet to be held and the trial more than two months away—does not alone carry the day.
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`However, on balance, all factors in the analysis are either neutral or disfavor granting a stay in this
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`case. It is the movant’s burden to demonstrate that a stay is warranted, and the Court concludes
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`that Samsung’s Motion fails to meet that burden in this case.
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`IV. CONCLUSION
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`For the reasons stated above, and in an effort to efficiently manage its docket, the Court
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`hereby DENIES Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America,
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`Inc.’s Motion to Stay Pending Inter Partes Review and Ex Parte Reexamination Proceedings (Dkt.
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`No. 157).
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`6
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 19th day of January, 2022.
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