Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 1 of 21 PageID #: 20326
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
`
`
`Defendants.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No. 2:21-cv-00072-JRG
`§
`(LEAD CASE)
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
`
`
`Defendant.
`
`
`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
`
`JURY TRIAL DEMANDED
`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE
`IN OPPOSITION TO DEFENDANT UBER TECHNOLOGIES, INC.,
`D/B/A UBER’S SECOND MOTION TO STAY FOLLOWING GRANTED EPRS
`AND INSTITUTED IPRS FOR ALL ASSERTED CLAIMS OF
`ALL ASSERTED PATENTS AND REQUEST FOR HEARING (DKT. 297)
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 2 of 21 PageID #: 20327
`
`TABLE OF CONTENTS
`
`Page(s)
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 3
`
`III.
`
`LEGAL STANDARDS ...................................................................................................... 4
`
`A.
`
`Motion to Stay......................................................................................................... 4
`
`IV.
`
`ARGUMENT ...................................................................................................................... 5
`
`A.
`
`B.
`
`C.
`
`The Case is at an Advanced Stage and the Trial Date Has Been Set ...................... 6
`
`A Stay Would Unduly Prejudice AGIS .................................................................. 7
`
`A Stay Will Not Conclusively Simplify the Issues in Question in this
`Case ....................................................................................................................... 10
`
`V.
`
`CONCLUSION ................................................................................................................. 15
`
`
`
`
`
`i
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 3 of 21 PageID #: 20328
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Affinity Labs of Texas, LLC v. Dice Elecs., LLC,
`No. 9:08-CV-163, 2009 WL 10296818 (E.D. Tex. Feb. 20, 2009) ...........................................7
`
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-cv-000361-JRG, Dkt. 1 (E.D. Tex. Nov. 4, 2019) ..........................................3, 13, 14
`
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-CV-359-JRG, 2021 WL 465424 (E.D. Tex. Feb. 9, 2021) ......................................13
`
`AGIS Software Dev. LLC v. Uber Technologies, Inc., d/b/a Uber,
`No. 2:21-cv-00026-JRG, Dkt. 1 (E.D. Tex. Jan. 29, 2021) .......................................................3
`
`Ambato Media, LLC v. Clarion Co.,
`No. 2:09-cv-242-JRG, 2012 WL 194172, at *1 (E.D. Tex. Jan. 23, 2012) .........................7, 10
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..........................................................4, 12
`
`BarTex Research LLC v. FedEx Corp.,
`611 F. Supp. 2d 647 (E.D. Tex. 2009) ...................................................................................7, 9
`
`Blitzsafe Texas, LLC v. FCA US LLC, et al.,
`No. 2:19-cv-00378-JRG, Dkt. 224 (E.D. Tex. Jan. 26, 2021) .........................................6, 7, 10
`
`Cellular Commc’ns Equip. LLC v. HTC Corp.,
`No. 6:16-cv-475-KNM, Dkt. 276 (E.D. Tex. May 8, 2018) ....................................................10
`
`Comcast Cable Commc’ns Corp., LLC v. Finisar Corp.,
`No. C 06-04206 WHA, 2007 WL 1052883 (N.D. Cal. Apr. 5, 2007) .......................................4
`
`Echostar Techs. Corp. v. TiVo, Inc.,
`No. 5:05-cv-81, 2006 WL 2501494 (E.D. Tex. July 14, 2006) .................................................5
`
`EMG Tech., Inc. v. Apple Inc.,
`No. 6:09-cv-367, Dkt. No. 270 (E.D. Tex. Nov. 15, 2010) .....................................................10
`
`Eon Corp. IP Holdings, LLC v. Sensus USA Inc.,
`No. 6:09-cv-116, 2009 WL 9506927 (E.D. Tex. Dec. 18, 2009) ..............................................8
`
`Ericsson, Inc. v. TCL Commc’n Tech. Holdings, Inc.,
`No. 2:15-cv-11-RSP, 2016 WL 1162162 (E.D. Tex. Mar. 23, 2016)........................................4
`
`ii
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 4 of 21 PageID #: 20329
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)................................................................................................12
`
`KIPB, LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-00056-JRG, 2019 WL 6173365 (E.D. Tex. Nov. 20. 2019) .................8, 9, 10, 12
`
`Landis v. N. Am. Co.,
`299 U.S. 248 ..............................................................................................................................4
`
`Longhorn HD LLC v. NetScout Sys., Inc.,
`No. 2:20-CV-00349-JRG, Dkt. 72 (E.D. Tex. Jan. 6, 2022) ........................................... passim
`
`MacroSolve, Inc. v. Antenna Software, Inc.,
`No. 6:11cv287-MHS-KNM, 2013 WL 7760889 (E.D. Tex. Aug. 30, 2013) ..........................11
`
`Personalweb Techs., LLC v. Int’l Bus. Machs. Corp.,
`No. 6:12-cv-661-JRG, 2016 WL 7364672 (E.D. Tex. Jan. 28, 2016) .............................6, 7, 10
`
`Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc.,
`Case No. 2:19-cv-225, 2021 WL 121154, at *1 (E.D. Tex. Jan. 13, 2021) .......................13, 14
`
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June 14, 2016) ............................9
`
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796 (E.D. Tex. Nov. 29, 2016) ..........................4
`
`Realtime Data, LLC v. Hewlett Packard Enter. Co.,
`No. 6:16-cv-00086-RWS-JDL, 2017 WL 3712916 (E.D. Tex. Feb. 3, 2017) ..........................5
`
`Rembrandt Wireless Techs. LP v. Samsung Elecs. Co.,
`No. 2:13CV213-JRG-RSP, 2015 WL 627887 (E.D. Tex. Jan. 29, 2015) .................................9
`
`RFCyber Corp. v. Google LLC, et al.,
`No. 2:20-cv-274-JRG, Dkt. 201 (E.D. Tex. Jan. 4, 2022) .........................................................8
`
`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) ...............................................................................4, 5, 6
`
`ThinkOptics, Inc. v. Nintendo of Am., Inc.,
`No. 6:11-CV-455, 2014 WL 4477400 (E.D. Tex. Feb. 27, 2014) .......................................7, 11
`
`Uber Technologies, Inc. v. AGIS Software Dev. LLC,
`IPR2021-01306, Paper 1 (P.T.A.B. July 23, 2021) ...................................................................3
`
`Uber Techs., Inc. v. AGIS Software Dev. LLC,
`IPR2021-01307, Paper 1 (P.T.A.B. July 23, 2021) ...................................................................3
`
`iii
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 5 of 21 PageID #: 20330
`
`Uber Techs., Inc. v. AGIS Software Dev. LLC,
`IPR2021-01308, Paper 1 (P.T.A.B. July 23, 2021) ...................................................................3
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................8
`
`Xerox Corp. v. 3Com Corp.,
`69 F. Supp. 2d 404 (W.D.N.Y. 1999) ........................................................................................5
`
`Other Authorities
`
`Fed. R. Civ. P. 1 .............................................................................................................................10
`
`
`
`
`iv
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 6 of 21 PageID #: 20331
`
`
`
`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
`
`undersigned counsel, hereby submits this response in opposition to Defendant Uber Technologies,
`
`Inc., d/b/a Uber’s (“Defendant” or “Uber”) Second Motion to Stay Following Granted EPRs and
`
`Instituted IPRs for All Asserted Claims of All Asserted Patents and Request for Hearing (Dkt. 297)
`
`(the “Motion”).
`
`I.
`
`INTRODUCTION
`
`Uber has filed a second motion to stay, alleging that the PTAB’s institution of the IPRs on
`
`the ’838 and ’100 Patents warrants a stay. However, the IPRs address only two of the five Patents-
`
`in-Suit. Moreover, Uber waited nearly six months after the Complaint was filed to file its IPR
`
`petitions.
`
`With respect to the ex parte reexaminations of the ’724 and ’728 Patents, this Court has
`
`already held that given the nature of ex parte reexamination proceedings, this does not provide a
`
`sufficient basis to stay the entirety of the case pending these proceedings. As noted by this Court,
`
`the USPTO has granted 92.2% of requests for reexamination, as it is a matter of course that the
`
`USPTO grants these ex parte reexamination requests. Ex. A, Ex Parte Historical Statistics. This
`
`does not have bearing on the outcome. Even where requests for ex parte reexamination are
`
`granted, there appears to be almost an 80% chance that claims will survive. Id. Uber waited until
`
`October 22, 2021 to file its requests for reexamination, just two weeks before opening expert
`
`reports were served. Nonetheless, Uber’s reexamination requests are weak and AGIS views its
`
`chances of defeating the reexaminations as highly likely given the ex parte reexamination
`
`statistics. Indeed, this Court has cited to the same PTO statistics in holding that there is “serious
`
`doubt on the conclusion that an EPR—even where the claims have been initially rejected—will
`
`result in a simplification of the issues.” Longhorn HD LLC v. NetScout Sys., Inc., No. 2:20-CV-
`
`00349-JRG, Dkt. 72 at 6 n.6 (E.D. Tex. Jan. 6, 2022).
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 7 of 21 PageID #: 20332
`
`
`
`Lastly, as conceded by Uber, the ’970 Patent is no longer in reexamination and the USPTO
`
`has issued a reexamination certificate confirming the patentability of the claims of the ’970 Patent
`
`as amended. As submitted in AGIS’s response to Uber’s motion to dismiss, AGIS disagrees that
`
`the amended claims are not substantially identical, such that AGIS has “mooted its suit based on
`
`the ’970 Patent.” Nonetheless, Uber’s motion to dismiss is pending and Uber should not be
`
`permitted to stand on its own motion to dismiss as grounds for staying the entirety of this case.
`
`In light of the foregoing, Uber cannot satisfy its burden to demonstrate that the relevant
`
`factors weigh in favor of granting a stay of this litigation, particularly at this late stage. With less
`
`than a month before the pretrial conference and following denial of Uber’s motion to stay pending
`
`purported standing issues, Uber’s delay tactics should warrant denial of this Motion. First, Uber
`
`has not shown that a stay will result in simplification of the issues in this case. No estoppel will
`
`apply as a result of Uber’s reexamination requests. Second, this case is not in its infancy. As
`
`shown below, the Complaint against Uber was filed on January 29, 2021, nearly one year ago, and
`
`the parties have and are continuing to actively litigate this matter. Fact and expert discovery have
`
`closed, initial pretrial disclosures exchanged, and dispositive and summary judgment motions and
`
`responses have been filed. The pretrial conference is set for February 7, 2021, and trial is set for
`
`early March. A stay would be highly disruptive to the progress made by the Court and the parties
`
`in this case. Lastly, an unnecessary delay would unduly burden and prejudice AGIS. A stay of
`
`this litigation serves as an unnecessary delay tactic to pause an active litigation without reason.
`
`Furthermore, an indefinite stay would prevent AGIS from exercising its rights to defend its patents.
`
`Accordingly, AGIS respectfully requests that the Court deny Uber’s second motion to stay in its
`
`entirety.
`
`2
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 8 of 21 PageID #: 20333
`
`
`
`II.
`
`BACKGROUND
`
`AGIS filed suit against Google LLC (“Google”) on November 4, 2019, asserting
`
`infringement of six patents, including U.S. Patent No. 8,213,970 (the “’970 Patent”). See AGIS
`
`Software Dev. LLC v. Google LLC, No. 2:19-cv-000361-JRG, Dkt. 1 (E.D. Tex. Nov. 4, 2019).
`
`On May 5, 2020, six months after the Complaint against Google was filed, Google filed a request
`
`for ex parte reexamination of all the asserted patents, including the ’970 Patent. See Ex. B, ’970
`
`Patent Reexamination Records. The USPTO granted Google’s request for reexamination of the
`
`’970 Patent on July 27, 2020. Id. On December 9, 2021, the USPTO issued a reexamination
`
`certificate for the ’970 Patent, determining that Claims 2 and 10 are patentable as amended, and
`
`Claims 11-13, which are dependent on amended claims, to be patentable. Id.
`
`The present case against Uber was filed on January 29, 2021, asserting infringement of the
`
`’970 Patent, U.S. Patent Nos. 7,031,728 (the “’728 Patent”); 7,630,724 (the “’724 Patent”);
`
`10,341,838 (the “’838 Patent”); and 10,299,100 (the “’100 Patent”). See AGIS Software Dev. LLC
`
`v. Uber Technologies, Inc., d/b/a Uber, No. 2:21-cv-00026-JRG, Dkt. 1 (E.D. Tex. Jan. 29, 2021).
`
`On October 22, 2021, Uber filed requests for ex parte reexamination of the ’724 and ’728 Patents.
`
`The USPTO ordered reexamination on December 6, 2021, and December 7, 2021. See Dkts. 297-
`
`4 – 297-5.
`
`On July 23, 2021, Uber filed three Petitions for inter partes review against the ’838 and
`
`’100 Patents. See Uber Technologies, Inc. v. AGIS Software Dev. LLC, IPR2021-01306, Paper 1
`
`(P.T.A.B. July 23, 2021); Uber Techs., Inc. v. AGIS Software Dev. LLC, IPR2021-01307, Paper 1
`
`(P.T.A.B. July 23, 2021); Uber Techs., Inc. v. AGIS Software Dev. LLC, IPR2021-01308, Paper 1
`
`(P.T.A.B. July 23, 2021). The PTAB granted institution on all three petitions on January 7, 2022.
`
`See Dkts. 297-1-297-3. AGIS intends to file for rehearing of the institution decisions and intends
`
`to identify the errors in the analysis of the merits and discretionary denial. While the PTAB noted
`
`3
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 9 of 21 PageID #: 20334
`
`
`
`that “[t]he district court has not yet ruled on Petitioner’s motion to stay,” the Court’s denial of one
`
`of Uber’s motions to stay will reverse the stay factor to weigh in favor of denial of institution and
`
`the PTAB will need to reexamine its analysis for discretionary denial under Fintiv. The briefing
`
`on rehearing of the IPR institution decisions and determination on rehearing will extend beyond
`
`the pretrial date and the date of trial set by this Court.
`
`III. LEGAL STANDARDS
`
`A. Motion to Stay
`
`“In all cases before it, the Court places great importance on going to trial on the date set in
`
`the scheduling order unless extraordinary circumstances arise.” Soverain Software LLC v.
`
`Amazon.com, Inc., 356 F. Supp. 2d 660, 663 (E.D. Tex. 2005). Accordingly, courts have
`
`frequently cautioned against broadly granting requests for stay pending IPR proceedings. Realtime
`
`Data LLC v. Actian Corp., No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796, at *2 (E.D. Tex. Nov.
`
`29, 2016) (“[T]here is no per se rule that patent cases should be stayed pending PTO proceedings,
`
`because such a rule ‘would invite parties to unilaterally derail litigation.’”); Comcast Cable
`
`Commc’ns Corp., LLC v. Finisar Corp., No. C 06-04206 WHA, 2007 WL 1052883, at *1 (N.D.
`
`Cal. Apr. 5, 2007) (“If litigation were stayed every time a claim in suit undergoes reexamination,
`
`federal infringement actions would be dogged by fits and starts. Federal court calendars should
`
`not be hijacked in this manner.”).
`
`A district court has the inherent power to control its own docket, including the power to
`
`stay proceedings. Ericsson, Inc. v. TCL Commc’n Tech. Holdings, Inc., No. 2:15-cv-11-RSP, 2016
`
`WL 1162162, at *1 (E.D. Tex. Mar. 23, 2016). Management of the Court’s docket “calls for the
`
`exercise of judgment, which must weigh competing interests and maintain an even balance.”
`
`Landis v. N. Am. Co., 299 U.S. 248. 254-55 (1936). In determining whether to stay litigation
`
`pending reexamination, courts consider “(1) whether a stay will unduly prejudice or present a clear
`
`4
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 10 of 21 PageID #:
`20335
`
`
`
`tactical disadvantage to the nonmoving party, (2) whether a stay will simplify the issues in question
`
`and trial of the case, and (3) whether discovery is complete and whether a trial date has been set.”
`
`Soverain Software LLC, 356 F. Supp. 2d at 662 (citing Xerox Corp. v. 3Com Corp., 69 F. Supp.
`
`2d 404, 406 (W.D.N.Y. 1999)). “Essentially, courts determine whether the benefits of a stay
`
`outweigh the inherent costs based on these factors.” Echostar Techs. Corp. v. TiVo, Inc., No. 5:05-
`
`cv-81, 2006 WL 2501494, at *1 (E.D. Tex. July 14, 2006). The party seeking the stay bears the
`
`burden of showing a stay is appropriate. Realtime Data, LLC v. Hewlett Packard Enter. Co., No.
`
`6:16-cv-00086-RWS-JDL, 2017 WL 3712916, at *3 (E.D. Tex. Feb. 3, 2017).
`
`A stay will not automatically be granted where a request for reexamination has been
`
`granted. See Longhorn HD LLC v. NetScout Sys., Inc., No. 2:20-CV-00349-JRG, Dkt. 72 at (E.D.
`
`Tex. Jan. 6, 2022).
`
`IV. ARGUMENT
`
`Uber fails to demonstrate that the factors weigh in favor of granting a stay. Uber’s Motion
`
`is based on three different grounds: (1) the issuance of the reexamination certificate of the ’970
`
`Patent confirming the patentability of Claims 2, 10, 11-13 as amended; (2) the institution of Uber’s
`
`IPRs on the ’838 and ’100 Patents; and (3) granting of the reexamination requests of the ’724 and
`
`’728 Patents. However, Uber has already submitted a motion to dismiss regarding the ’970 Patent,
`
`for which briefing is not yet complete. In addition, the references relied upon in Uber’s IPRs
`
`overlap with the prior art references submitted and relied upon by Uber and its expert. With respect
`
`to its reexamination requests, Uber should not be rewarded for its dilatory tactics of waiting to file
`
`its reexamination requests. Indeed, Uber’s own tactics here demonstrate the Court’s concerns
`
`regarding “overtly strategic” efforts to “circumvent[] the IPR regime set forth by Congress in the
`
`AIA.” Uber waited over nine months to file its reexamination requests, and nothing prevents Uber
`
`or another party from filing additional reexamination requests. Accordingly, the factors weigh
`
`5
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 11 of 21 PageID #:
`20336
`
`
`
`against a stay and Uber’s Motion should be denied.
`
`A.
`
`The Case is at an Advanced Stage and the Trial Date Has Been
`Set
`
`The late stage of the case weighs against a stay. The Court has issued its Claim
`
`Construction Memorandum and Order (Dkt. 213), fact discovery has closed, expert reports have
`
`been exchanged, fact and expert depositions have been completed, and the parties have filed their
`
`dispositive motions, motions to strike, and summary judgment motions and responses to such
`
`motions. See Dkt. 257. Thousands of pages of discovery have been produced by both parties, the
`
`parties have submitted discovery requests and responses, and fact depositions have been
`
`conducted. The pretrial conference is scheduled for February 7, 2022. Trial in this case is set for
`
`March 7, 2022. Uber fails to set forth any extraordinary circumstances which warrant a stay and
`
`would ultimately delay this case indefinitely. See Soverain, 356 F. Supp. 2d at 663 (“In all cases
`
`before it, the Court places great importance on going to trial on the date set in the scheduling order
`
`unless extraordinary circumstances arise. The Court does not believe that reexamination is
`
`necessarily such an extraordinary circumstance in this patent case.”). Accordingly, the advanced
`
`stage of this case weighs heavily in favor of denying a stay. See Personalweb Techs., LLC v. Int’l
`
`Bus. Machs. Corp., No. 6:12-cv-661-JRG, 2016 WL 7364672, at *3 (E.D. Tex. Jan. 28, 2016)
`
`(holding this factor weighs against a stay where “a trial date has already been set and is
`
`approaching quickly”); Blitzsafe Texas, LLC v. FCA US LLC, et al., No. 2:19-cv-00378-JRG, Dkt.
`
`224 at 3 (E.D. Tex. Jan. 26, 2021) (“In short, this case is nearly ready for trial, and this factor
`
`weighs against a stay. This remains true even though, as Defendants note, there is still work to be
`
`done in this case.”).
`
`6
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 12 of 21 PageID #:
`20337
`
`
`
`B.
`
`A Stay Would Unduly Prejudice AGIS
`
`A stay would unduly prejudice and present a clear tactical disadvantage to the patentee,
`
`AGIS, which has an interest in timely enforcement of its patent rights. See Personalweb Techs.,
`
`2016 WL 7364672, at *2; Blitzsafe, Dkt. 224 at 2 (citing Soverain, 356 F. Supp. 2d at 662;
`
`ThinkOptics, Inc. v. Nintendo of Am., Inc., No. 6:11-CV-455, 2014 WL 4477400, at *1 (E.D. Tex.
`
`Feb. 27, 2014)). Courts have recognized that waiting for a process, such as the reexamination
`
`proceeding, to conclude, “could [] take several years to reach resolution.” Ambato Media, LLC v.
`
`Clarion Co., No. 2:09-cv-242-JRG, 2012 WL 194172, at *1 (E.D. Tex. Jan. 23, 2012); BarTex
`
`Research LLC v. FedEx Corp., 611 F. Supp. 2d 647, 651 (E.D. Tex. 2009). Uber’s request for a
`
`stay sets forth an indeterminate amount of time and would be highly prejudicial to AGIS by
`
`“throwing its effort to adjudicate its claims back into limbo.” Personalweb, 2016 WL 7364672,
`
`at *2.
`
`Moreover, as shown above, AGIS would not only be prejudiced by an unnecessary delay,
`
`but this case risks being stayed indefinitely because there is no statutory time limit for requesting
`
`reexaminations, and Uber has not limited its requested stay of this litigation to the temporal
`
`confines of the reexamination proceedings. See Longhorn, No. 2:20-cv-00349-JRG, Dkt. 72 at 4
`
`(“Further, the failure of anyone (NetScout or Juniper Networks) to initiate an EPR until nine
`
`months after this case was filed would bring about a substantial waste of resources if a stay lasting
`
`over two year[s] were to be granted.”). Consequently, if dissatisfied with the results of
`
`reexamination, Uber could simply request yet another proceeding, relying on other prior art
`
`references. See Affinity Labs of Texas, LLC v. Dice Elecs., LLC, No. 9:08-CV-163, 2009
`
`WL 10296818, at *3 (E.D. Tex. Feb. 20, 2009) (finding prejudice because “if things do not go well
`
`at the PTO, each Defendant in turn can file a request for ex parte reexamination.”). The Court has
`
`declared that this, too, constitutes potential prejudice to the Plaintiff and weighs against a stay. See
`
`7
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 13 of 21 PageID #:
`20338
`
`
`
`Eon Corp. IP Holdings, LLC v. Sensus USA Inc., No. 6:09-cv-116, 2009 WL 9506927, at *3 (E.D.
`
`Tex. Dec. 18, 2009) (finding prejudice and unfair tactical advantage because “if the defendants in
`
`this and the related case are not pleased with the outcome, they could subject Eon to serial filings
`
`of ex parte reexamination requests”) (internal citations omitted); see also KIPB, LLC v. Samsung
`
`Elecs. Co., No. 2:19-cv-00056-JRG, 2019 WL 6173365, at *3 (E.D. Tex. Nov. 20. 2019)
`
`(“Furthermore, a stay in this case could be very lengthy, which would result in a significant delay
`
`as KIPB asserts that ‘the PTAB would not even complete its review of the EPR until after the
`
`August 2020 trial in this case has already concluded. And its decision is appealable to the Federal
`
`Circuit.”).
`
`The PTAB would not render its final written decision until approximately January 2023—
`
`ten months after this Court’s March 7, 2022 trial date. See RFCyber Corp. v. Google LLC, et al.,
`
`No. 2:20-cv-274-JRG, Dkt. 201 (E.D. Tex. Jan. 4, 2022). Accordingly, staying the case pending
`
`the final written decisions in the IPRs would be extremely prejudicial to AGIS. Further, this Court
`
`has determined that “[n]otably, unlike an IPR, there is no timeline for the duration of an EPR.”
`
`Longhorn, No. 2:20-cv-00349-JRG, Dkt. 72 at 4 (“Indeed, the average EPR currently lasts 25.7
`
`months.”).
`
`Lastly, Uber’s arguments that AGIS would not suffer any prejudice merely because it
`
`allegedly “waited until 2021 to file suit against Uber,” is unpersuasive. Uber cites to its own
`
`motion to stay pending Patent Office proceedings, see Dkt. 297 at 2 (citing Dkt. 180),1 and to
`
`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1314 (Fed. Cir. 2014), to support this
`
`
`1 To the extent Uber relies on its arguments made in Dkt. 180, AGIS incorporates by reference its
`arguments from its Response in Opposition to Defendant Uber Technologies, Inc., d/b/a Uber’s
`Motion to Stay Pending Patent Office Proceedings Regarding the Asserted Patents (Dkt. 180). See
`Dkt. 211.
`
`8
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 14 of 21 PageID #:
`20339
`
`
`
`argument, stating in a parenthetical that the Federal Circuit found “no undue prejudice from a stay
`
`where patentee ‘waited nearly a year’ to bring infringement suit.” Dkt. 297 at 2. This is inaccurate.
`
`The Federal Circuit found that the undue prejudice and tactical disadvantage factor weighed
`
`slightly against a stay, even if a delay in filing suit weighed against claims of undue prejudice.
`
`Uber’s argument that the mere passage of time is sufficient to eliminate undue prejudice is
`
`unsupported.
`
`Uber’s contention in its initial motion to stay that AGIS would not be prejudiced because
`
`AGIS is a patent assertion entity is unpersuasive. See Dkt. 180. “The right to exclude, even for a
`
`non-practicing entity, may be the only way to fully vindicate the patentee’s ownership in the
`
`patent.” BarTex Res., 611 F. Supp. 2d at 652; see also KIPB, 2019 WL 6173365, at *3 (“Even
`
`assuming that KIPB is a non-practicing entity and that the Parties are not competitors, KIPB still
`
`has an interest in the timely enforcement of its patents.”); Rembrandt Wireless Techs. LP v.
`
`Samsung Elecs. Co., No. 2:13CV213-JRG-RSP, 2015 WL 627887, at *1 (E.D. Tex. Jan. 29, 2015)
`
`(“[T]hat Rembrandt is not currently practicing the patents does not mean that . . . it is not prejudiced
`
`by a substantial delay of an imminent trial date.”). Accordingly, even if, as Uber contends, AGIS
`
`would be entitled to monetary relief, it will still suffer from irreparable harm during that time.
`
`BarTex, 611 F. Supp. 2d at 652 (“Should FedEx be found to infringe the asserted patent in this
`
`litigation, damages alone may not fully compensate BarTex for a lengthy delay resulting from
`
`reexamination.”). This Court has found undue prejudice for a plaintiff pursuing solely monetary
`
`damages in Realtime Data LLC v. Actian Corp., No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259,
`
`at *2 (E.D. Tex. June 14, 2016) (holding plaintiff was not precluded from experiencing prejudice
`
`based on a lengthy delay should a stay be granted merely because it was a non-practicing entity
`
`that did not compete with the defendants and was pursuing monetary damages). Moreover, this
`
`9
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 15 of 21 PageID #:
`20340
`
`
`
`Court has “cautioned against such an argument, noting that delaying a patentee’s lawsuit where
`
`the patentee is not a direct competitor is ‘far from non-prejudicial.’” Longhorn, No. 2:20-cv-
`
`00349-JRG, Dkt. 72 at 4 n.3 (citation omitted).
`
`General arguments regarding timely enforcement of a plaintiff’s rights are insufficient, but
`
`specific concerns, such as the ones put forth here, have been considered by this Court. Cellular
`
`Commc’ns Equip. LLC v. HTC Corp., No. 6:16-cv-475-KNM, Dkt. 276 at 3 (E.D. Tex. May 8,
`
`2018). Accordingly, this factor weighs against a stay which would “likely impede the Court’s
`
`obligation ‘to secure the just, speedy, and inexpensive determination of every action.’”
`
`Personalweb Techs., 2016 WL 7364672, at *2 (citing Fed. R. Civ. P. 1). AGIS will be prejudiced
`
`by a stay and Uber has failed to meet its burden to prove otherwise. See Longhorn, No. 2:20-cv-
`
`00349-JRG, Dkt. 72 at 4 (“The Court is persuaded that such a delay in filing the EPR coupled with
`
`the risk of further un-ending EPRs weighs against a stay.”).
`
`C.
`
`A Stay Will Not Conclusively Simplify the Issues in Question in
`this Case
`
`A stay will not conclusively simplify the issues in question this case. Uber’s argument that
`
`the asserted claims may be cancelled during reexamination or in the IPRs is merely speculative.
`
`See Blitzsafe, Dkt. 224 at 3. “Even though some of the claims may change in this case, ’the
`
`interests of justice will be better served by dealing with that contingency when and if it occurs,
`
`rather than putting this case indefinitely on hold.’” Ambato Media, LLC v. Clarion Co., Ltd., et al.,
`
`No. 2:09-cv-242, Dkt. No. 250 at 3 (E.D. Tex. Jan. 23, 2012) (citing EMG Tech., Inc. v. Apple
`
`Inc., No. 6:09-cv-367, Dkt. No. 270, at 5 (E.D. Tex. Nov. 15, 2010)). Nonetheless, “district courts
`
`have no role in reviewing the PTAB’s determinations regarding the patentability of claims.” KIPB
`
`LLC, 2019 WL 6173365, at *2.
`
`10
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 16 of 21 PageID #:
`20341
`
`
`
`The USPTO’s determination that a substantial new question of patentability exists with
`
`respect to the ’728 and ’724 Patents is not a rejection of the claims, much less a final rejection.
`
`Accordingly, courts have held that even where reexamination proceedings are already under way,
`
`they are “far from complete,” because “[t]he ultimate outcome [of a reexamination proceeding] is
`
`unpredictable,” which weighs against a stay. MacroSolve, Inc. v. Antenna Software, Inc., No.
`
`6:11cv287-MHS-KNM, 2013 WL 7760889, at *2 (E.D. Tex. Aug. 30, 2013) (finding
`
`simplification factor weighed against stay where reexamination was already in progress); see also
`
`Thinkoptics, Inc. v. Nintendo of Am., Inc., No. 6:11-cv-455, Dkt. 345 at 3 (E.D. Tex. Feb. 27, 2014)
`
`(explaining that because the reexamination proceedings were far from complete, it gives little
`
`indication regarding “the final scope of the claims that will eventually emerge from reexamination
`
`after [the plaintiff] has exhausted all administrative and judicial courses of review.”) (citation
`
`omitted).
`
`Uber does not submit that the merits of its reexamination requests will materially impact
`
`the parties’ positions or arguments in this case. Longhorn, No. 2:20-cv-00349-JRG, Dkt. 72 at 5
`
`n. 5. Further, while Uber submits that the asserted claims may be cancelled, “it also is possible
`
`that [AGIS] amends the claims in a way that has no bearing on this case.” Id. at 5 n.4 (“Further,
`
`it is possible that LHD persuades the PTO that the rejection is meritless, in which case the claims
`
`would remain unchanged.”). Uber has made no showing that “any one of these possible outcomes
`
`is more likely than the other based on the merits” of its reexamination request. Id. (“In light of the
`
`various potential outcomes of the Juniper EPR, the Court cannot conclude, without engaging in
`
`improper speculation, that the Juniper EPR will ultimately simplify the issues in this case.” Id.
`
`While Uber has not submitted the likelihood of outcomes of the reexamination process, in
`
`denying a motion to stay pending an EPR, this Court noted that arguments regarding the
`
`11
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 311 Filed 01/12/22 Page 17 of 21 PageID #:
`20342
`
`
`
`“likelihood of outcomes in the EPR process are further undermined by PTO statistics.” Id. at 6
`
`n.6. Specifically, the Court noted that while “92.2% of EPR applications are granted,” “after an
`
`EPR application is granted, the fate of the claims is far from predetermined.” Id. “20.9% of
`
`granted EPRs ultimately result in all claims being confirmed and 13.1% result in all claims being
`
`cancelled.” Id. While “66% of all granted EPRs result in some changes to the claims, there is no
`
`way to know how or if such changes are significant or minor.” Id. Given the “average pendency
`
`of an EPR is 25.7 mont