Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 1 of 16 PageID #: 9013
`
`
`JAWBONE INNOVATIONS, LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No. 2:21-cv-00186-JRG-RSP
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`Defendants.
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`
`
`
`
`PLAINTIFF JAWBONE INNOVATIONS, LLC’S RESPONSE IN OPPOSITION
`TO DEFENDANTS SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA, INC.’S
`MOTION TO STAY PROCEEDINGS PENDING INTER PARTES REVIEW (DKT. 106)
`
`
`
`
`
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 2 of 16 PageID #: 9014
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 2
`
`LEGAL STANDARD ......................................................................................................... 3
`
`ARGUMENT ...................................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`The Trial Date Has Been Set and the Case Is in an Advanced Stage ..................... 4
`
`A Stay Would Unduly Prejudice Jawbone.............................................................. 5
`
`A Stay Will Not Conclusively Simplify the Issues in Question in this
`Case ......................................................................................................................... 7
`
`CONCLUSION ................................................................................................................... 9
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`
`
`i
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 3 of 16 PageID #: 9015
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Ambato Media, LLC v. Clarion Co.,
`No. 2:09-cv-242, Dkt. 250 (E.D. Tex. Jan. 23, 2012)................................................................8
`
`BarTex Rsch. LLC v. FedEx Corp.,
`611 F. Supp. 2d 647 (E.D. Tex. Apr. 20, 2009) .........................................................................7
`
`Comcast Cable Commc’ns Corp., LLC v. Finisar Corp.,
`No. C 06-04206 WHA, 2007 WL 1052883 (N.D. Cal. Apr. 5, 2007) .......................................3
`
`Echostar Techs. Corp. v. TiVo, Inc.,
`No. 5:05 CV 81 DF, 2006 WL 2501494 (E.D. Tex. July 14, 2006) ..........................................3
`
`EMG Tech., Inc. v. Apple Inc.,
`No. 6:09-cv-367, Dkt. 270 (E.D. Tex. Nov. 15, 2010) ..............................................................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) ........................................3
`
`Huawei Techs. Co. v. Verizon Commc’ns, Inc.,
`No. 2:20-CV-00030-JRG, 2020 WL 7134088 (E.D. Tex. Nov. 10, 2020)................................6
`
`Intellectual Ventures II LLC v. Kemper Corp.,
`No. 6:16-cv-81-JRG, 2016 WL 7634422 (E.D. Tex. Nov. 7, 2016) .........................................7
`
`KIPB LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-cv-56-JRG-RSP, 2019 WL 6173365 (E.D. Tex. Nov. 20, 2019) ......................7, 9
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................3
`
`Longhorn HD LLC v. NetScout Sys., Inc.,
`No. 2:20-cv-00349-JRG, 2022 WL 71652 (E.D. Tex. Jan. 6, 2022) .........................................5
`
`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-cv-390-RWS-RSP, 2019 WL 3826051 (E.D. Tex. Aug. 14, 2019) ...........................4
`
`Personalweb Techs. LLC v. Int'l Bus. Mach. Corp.,
`No. 6:12-CV-661-JRG, 2016 WL 7364672 (E.D. Tex. Jan. 28, 2016) .................................5, 6
`
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June 14, 2016) ............................7
`
`ii
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 4 of 16 PageID #: 9016
`
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796 (E.D. Tex. Nov. 29, 2016) ..........................3
`
`Realtime Data, LLC v. Hewlett Packard Enter. Co.,
`No. 6:16-cv-00086-RWS-JDL, 2017 WL 3712916 (E.D. Tex. Feb. 3, 2017) ..........................4
`
`Rembrandt Wireless Techs. LP v. Samsung Elecs. Co.,
`No. 2:13CV213-JRG-RSP, 2015 WL 627887 (E.D. Tex. Jan. 29, 2015) .................................7
`
`Samsung Elecs. Co., Ltd. v. Jawbone Innovations, LLC,
`IPR2022-01322, Paper 4 (P.T.A.B. July 27, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-00213, Paper 10 (P.T.A.B. June 8, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-00213, Paper 3 (P.T.A.B. Nov. 19, 2021) ..................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-00865, Paper 4 (P.T.A.B. Apr. 26, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-01021, Paper 4 (P.T.A.B. May 16, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-01147, Paper 4 (P.T.A.B. June 16, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-01320, Paper 4 (P.T.A.B. July 27, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-01321, Paper 4 (P.T.A.B. July 27, 2022) ...................................................................2
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC,
`IPR2022-01323, Paper 4 (P.T.A.B. July 27, 2022) ...................................................................2
`
`Scorpcast, LLC v. Boutique Media Pty Ltd.,
`No. 2:20-cv-00193-JRG-RSP, 2020 WL 7631162 (E.D. Tex. Dec. 22, 2020) .....................8, 9
`
`Solas OLED Ltd. v. Samsung Display Co.,
`No. 2:19-cv-00152-JRG, 2020 WL 4040716 (E.D. Tex. July 17, 2020) ...................................7
`
`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) .......................................................................................3
`
`Stragent, LLC v. BMW of N. Am.,
`No. 6:16-cv-446-RWS-KNM, 2017 WL 2839260 (E.D. Tex. Apr. 20, 2017) ..........................4
`
`iii
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 5 of 16 PageID #: 9017
`
`ThinkOptics, Inc. v. Nintendo of Am., Inc.,
`No. 6:11-CV-455, 2014 WL 4477400 (E.D. Tex. Feb. 27, 2014) .............................................6
`
`TQ Delta, LLC v. CommScope Holding Co.,
`No. 2:21-CV-00310-JRG, 2022 WL 2872993 (E.D. Tex. July 21, 2022) .................................5
`
`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
`No. 2:19-cv-00259-JRG-RSP, 2020 WL 1433960 (E.D. Tex. Mar. 24, 2020) .........................8
`
`Uniloc USA, Inc. v. Acronis, Inc.,
`No. 6:15-CV-1001-RWS-KNM, 2017 WL 2899690 (E.D. Tex. Feb. 9, 2017) ....................7, 8
`
`
`
`iv
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 6 of 16 PageID #: 9018
`
`
`
`Plaintiff Jawbone Innovations, LLC (“Plaintiff” or “Jawbone”), by and through its
`
`undersigned counsel, respectfully submits this Response in Opposition to Defendants Samsung
`
`Electronics Co., Ltd. and Samsung Electronics America, Inc.’s (collectively, “Defendants” or
`
`“Samsung”) Motion to Stay Proceedings Pending Inter Partes Review (Dkt. 106) (“Motion”).
`
`I.
`
`INTRODUCTION
`
`Samsung has filed its second motion to stay, arguing that the institution of a single inter
`
`partes review (“IPR”) warrants a stay. Samsung’s remaining IPR petitions have not been instituted
`
`and even the earliest institution decision is not due until after fact and expert discovery has
`
`concluded, opening and rebuttal expert reports have been exchanged, and pretrial disclosures have
`
`been exchanged. Samsung’s IPR petitions were filed over the course of nine months, and the
`
`petition against U.S. Patent No. 8,019,091, which was included in Jawbone’s original complaint,
`
`came just a day prior to the deadline for filing IPRs.
`
`Samsung cannot meet its burden to demonstrate that the relevant stay factors weigh in favor
`
`of granting a stay of this litigation, particularly at this late stage. Samsung’s delay tactics,
`
`including the belated filing of a motion to transfer and correspondingly, its motion to stay pending
`
`a decision on the motion to transfer, should warrant denial of this Motion. First, Samsung has not
`
`shown that a stay would result in simplification of the issues in this case where institution decisions
`
`on a number of the IPR petitions would not come until after the trial date. Second, this case is not
`
`in its infancy, where this case was filed over a year ago and the parties have and are continuing to
`
`actively litigate this matter. The Court recently issued its Claim Construction Order, and Jawbone
`
`has invested significant resources in conducting discovery, particularly of Samsung’s witnesses
`
`located in Korea. 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 Jawbone.
`
`Accordingly, Jawbone respectfully requests that the Court deny Samsung’s second motion to stay
`
`
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 7 of 16 PageID #: 9019
`
`in its entirety.
`
`II.
`
`BACKGROUND
`
`Jawbone filed suit against Defendants on May 27, 2021, asserting infringement of U.S.
`
`Patent Nos. 8,019,091 (the “’091 Patent”) and 8,280,072 (the “’072 Patent”). See Dkt. 1. Jawbone
`
`amended its complaint on October 26, 2021 to include assertion of U.S. Patent Nos. 7,246,058 (the
`
`“’058 Patent”); 10,779,080 (the “’080 Patent”); 11,122,357 (the “’357 Patent”); 8,467,543 (the
`
`“’543 Patent”); and 8,503,691 (the “’691 Patent”). See Dkt. 21.
`
`On November 19, 2021, Samsung filed a petition for IPR against the ’072 Patent. See
`
`Samsung Elecs. Co. v. Jawbone Innovations, LLC, IPR2022-00213, Paper 3 (P.T.A.B. Nov. 19,
`
`2021). The Patent Trial and Appeal Board (“PTAB”) granted institution on June 8, 2022. See id.
`
`IPR2022-00213, Paper 10 (P.T.A.B. June 8, 2022). On April 26, 2022, Samsung filed a petition
`
`for IPR against the ’543 Patent. See Samsung Elecs. Co. v. Jawbone Innovations, LLC, IPR2022-
`
`00865, Paper 4 (P.T.A.B. Apr. 26, 2022). Samsung filed a petition for IPR against the ’058 Patent
`
`on May 16, 2022. See Samsung Elecs. Co. v. Jawbone Innovations, LLC, IPR2022-01021, Paper
`
`4 (P.T.A.B. May 16, 2022). On June 16, 2022, Samsung filed a petition for IPR against the ’091
`
`Patent. See Samsung Elecs. Co. v. Jawbone Innovations, LLC, IPR2022-01147, Paper 4 (P.T.A.B.
`
`June 16, 2022). Samsung filed four petitions for IPR against the ’080, ’357, and ’691 Patents on
`
`July 27, 2022. See Samsung Elecs. Co. v. Jawbone Innovations, LLC, IPR2022-01320, Paper 4
`
`(P.T.A.B. July 27, 2022); Samsung Elecs. Co. v. Jawbone Innovations, LLC, IPR2022-01321,
`
`Paper 4 (P.T.A.B. July 27, 2022); Samsung Elecs. Co., Ltd. v. Jawbone Innovations, LLC,
`
`IPR2022-01322, Paper 4 (P.T.A.B. July 27, 2022); Samsung Elecs. Co. v. Jawbone Innovations,
`
`LLC, IPR2022-01323, Paper 4 (P.T.A.B. July 27, 2022).
`
`
`
`
`
`2
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 8 of 16 PageID #: 9020
`
`IPR No.
`
`Patent No. Filing Date
`
`2022-00213
`2022-00865
`2022-01021
`2022-01147
`2022-01320
`2022-01321
`2022-01322
`2022-01323
`
`
`
`’072
`’543
`’058
`’091
`’080
`’357
`’691
`’691
`
`11/19/2021
`4/26/2022
`5/16/2022
`6/16/2022
`7/27/2022
`7/27/2022
`7/27/2022
`7/27/2022
`
`III. LEGAL STANDARD
`
`Institution Decision
`Date
`6/8/2022 (Instituted)
`12/8/2022
`1//2023
`1//2023
`2/6/2023
`2/6/2023
`2/6/2023
`2/8/2023
`
`Expected Final Written
`Decision Date
`6/8/2023
`12/8/2023
`1//2024
`1/9/2024
`2/6/2024
`2/6/2024
`2/6/2024
`2/8/2024
`
`“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). “Essentially, courts determine
`
`whether the benefits of a stay outweigh the inherent costs based on these factors.” Echostar Techs.
`
`3
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 9 of 16 PageID #: 9021
`
`Corp. v. TiVo, Inc., No. 5:05 CV 81 DF, 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).
`
`IV. ARGUMENT
`
`Samsung fails to demonstrate that the factors weigh in favor of granting a stay. Samsung
`
`concedes that a single IPR has been instituted and several institution decisions will come after the
`
`February 6, 2023 trial date in this case. See Dkt. 58. Indeed, several of Samsung’s IPR petitions
`
`were filed shortly before the deadline for Samsung to file its IPR petitions. Samsung should not
`
`be rewarded for engaging in such dilatory tactics of waiting to file its IPR petitions. Accordingly,
`
`these factors weigh against a stay and Samsung’s Motion should be denied.
`
`A.
`
`The Trial Date Has Been Set and the Case Is in an Advanced Stage
`
`The stage of the case weighs against a stay. “This factor considers two sub-factors:
`
`(1) whether discovery is complete and whether a trial date has been set; and (2) whether the movant
`
`has unreasonably delayed filing its IPR petition and motion to stay.” Stragent, LLC v. BMW of N.
`
`Am., No. 6:16-cv-446-RWS-KNM, 2017 WL 2839260, at *2 (E.D. Tex. Apr. 20, 2017). Further,
`
`this factor is considered in light of the current stage of the case proceedings. See Peloton
`
`Interactive, Inc. v. Flywheel Sports, Inc., No. 2:18-cv-390-RWS-RSP, 2019 WL 3826051, at *5
`
`(E.D. Tex. Aug. 14, 2019) (“Usually, the Court evaluates the stage of the case as of the time the
`
`motion was filed.”).
`
`First, the parties have expended significant resources diligently moving the litigation. The
`
`parties have completed the claim construction briefing, the Court held a Markman hearing, and
`
`has since issued its Claim Construction Memorandum and Order. Dkt. 119. The parties have
`
`engaged in substantial discovery, including the exchange of thousands of documents, discovery
`
`4
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 10 of 16 PageID #: 9022
`
`responses, and in-person fact depositions of numerous witnesses in Korea. Further, the parties are
`
`due to exchange opening expert reports in less than three weeks. The pretrial conference is
`
`scheduled for January 5, 2023 and trial is set for February 6, 2023. See Dkt. 58.
`
`Samsung’s argument that judicial resources would be conserved are unpersuasive where,
`
`at the time Samsung’s Motion was filed, the parties had already completed claim construction
`
`briefing and the Court held a Markman hearing. The Court has since issued its Claim Construction
`
`Order, and “[a]lthough it is true that the parties, and the Court, will still invest additional resources
`
`in this case, all dates for remaining case events—including trial—have been set and the Court
`
`intends to maintain those dates.” Longhorn HD LLC v. NetScout Sys., Inc., No. 2:20-cv-00349-
`
`JRG, 2022 WL 71652, at *4 (E.D. Tex. Jan. 6, 2022).
`
`Second, the original complaint was filed May 27, 2021, asserting the ’072 and ’091 Patents.
`
`See Dkt. 1. The amended complaint was filed October 26, 2021 to include assertion of the ’058,
`
`’080, ’357, ’543, and ’691 Patents. See Dkt. 21. Samsung’s first IPR petition against the ’072
`
`Patent was filed in November 2021, but the last four petitions were filed less than one month ago,
`
`and nearly nine months after the amended complaint was filed. See supra 2-3. Even if institution
`
`were granted on every petition, any final written decision would likely issue months or nearly a
`
`year after the February 6, 2023 trial date. Accordingly, the advanced stage of litigation weighs
`
`against a stay. See TQ Delta, LLC v. CommScope Holding Co., No. 2:21-CV-00310-JRG, 2022
`
`WL 2872993, at *4 (E.D. Tex. July 21, 2022) (“By that time, the parties had already invested
`
`considerable time and expense in preparing this case. Further, the parties had already utilized
`
`significant resources to comply with deadlines for fact and expert discovery.”).
`
`B.
`
`A Stay Would Unduly Prejudice Jawbone
`
`A stay would unduly prejudice and present a clear tactical disadvantage to the patentee,
`
`Jawbone, which has an interest in timely enforcement of its patent rights. See Personalweb Techs.
`
`5
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 11 of 16 PageID #: 9023
`
`LLC v. Int’l Bus. Mach. Corp., No. 6:12-CV-661-JRG, 2016 WL 7364672, at *2 (E.D. Tex. Jan.
`
`28, 2016); ThinkOptics, Inc. v. Nintendo of Am., Inc., No. 6:11-CV-455, 2014 WL 4477400, at *1
`
`(E.D. Tex. Feb. 27, 2014). Samsung’s request for a stay of indeterminate length (Mot. at 6-7)
`
`would be highly prejudicial to Jawbone, “throwing its effort to adjudicate its claims back into
`
`limbo.” Personalweb., 2016 WL 7364672, at *2.
`
`First, while Samsung alleges that it “promptly” filed its IPR petitions, it concedes that the
`
`petitions were filed between six to nine months after the original or amended complaints. Mot. at
`
`6. While its petitions were filed within the statutory deadline, the latest IPR petitions were filed
`
`only one month ago, and decisions on institution for the last-filed IPRs would be issued during the
`
`trial in this case. In the meantime, the parties have expended substantial resources in the
`
`progression of this case. See supra at 4. Further, Samsung’s assertion that “[t]he deadline to
`
`substantially complete document production is still a month away” is incorrect—the deadline was
`
`June 21, 2022. Mot. at 6; see Dkt. 58.
`
`Second, Samsung’s allegation that “a stay will benefit both parties by allowing them to
`
`take advantage of the IPR system” appears to propose an indefinite stay while the institution
`
`decision, final written decisions, and any appeals resulting from these processes are exhausted.
`
`Nonetheless, it is undisputed that seven of the eight petitions filed by Samsung have not been
`
`instituted. See Huawei Techs. Co. v. Verizon Commc’ns, Inc., No. 2:20-CV-00030-JRG, 2020 WL
`
`7134088, at *2 (E.D. Tex. Nov. 10, 2020) (“[T]he Court concludes that the Defendants’ motion is
`
`premature, and a stay of these proceedings in advance of the PTAB’s decision on whether or not
`
`to grant the petition for inter partes review should be denied.”).
`
`Lastly, Samsung’s contention that Jawbone would not be prejudiced because Jawbone is a
`
`non-practicing entity is unpersuasive. Mot. at 6. “The right to exclude, even for a non-practicing
`
`6
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 12 of 16 PageID #: 9024
`
`entity, may be the only way to full vindicate the patentee’s ownership in the patent.” BarTex Rsch.
`
`LLC v. FedEx Corp., 611 F. Supp. 2d 647, 652 (E.D. Tex. Apr. 20, 2009); see also KIPB LLC v.
`
`Samsung Elecs. Co., No. 2:19-cv-cv-56-JRG-RSP, 2019 WL 6173365, at *3 (E.D. Tex. Nov. 20,
`
`2019) (“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.”); Solas OLED Ltd. v.
`
`Samsung Display Co., No. 2:19-cv-00152-JRG, 2020 WL 4040716, at *2 (E.D. Tex. July 17, 2020)
`
`(“The Court is not persuaded by Samsung’s argument that because Solas is not a competitor of
`
`Samsung, a delay to this litigation will result in no prejudice to Solas.”). Accordingly, even if, as
`
`contended by Samsung, Jawbone would be entitled to monetary relief, it will still suffer from
`
`irreparable harm during that time. 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.).
`
`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. Whether a stay “will
`
`result in simplification of the issues before a court is viewed as the most important factor when
`
`evaluating a motion to stay.” Uniloc USA, Inc. v. Acronis, Inc., No. 6:15-CV-1001-RWS-KNM,
`
`2017 WL 2899690, at *3 (E.D. Tex. Feb. 9, 2017) (citing Intellectual Ventures II LLC v. Kemper
`
`Corp., No. 6:16-cv-81-JRG, 2016 WL 7634422, at *2 (E.D. Tex. Nov. 7, 2016). “Simplification
`
`7
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 13 of 16 PageID #: 9025
`
`of the issues depends on whether the PTAB decides to grant the petition.” Id. (emphasis added.)
`
`Samsung’s arguments that the IPRs will greatly simplify the issues for this Court are
`
`contradicted by its own concession that the PTAB has not granted institution on the remaining
`
`petitions. Only one IPR has been instituted. As such, “it seems premature at this stage to stay the
`
`case due to Samsung’s non-instituted petition[s].” Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
`
`No. 2:19-cv-00259-JRG-RSP, 2020 WL 1433960, at *6 (E.D. Tex. Mar. 24, 2020); Scorpcast,
`
`LLC v. Boutique Media Pty Ltd., No. 2:20-cv-00193-JRG-RSP, 2020 WL 7631162, at *3 (E.D.
`
`Tex. Dec. 22, 2020) (“The ‘universal practice’ in this District, as well as the practice of most
`
`district courts, is to deny a motion for stay when the Board has not yet acted on a petition for
`
`IPR.”). Samsung’s contention that “the pending IPRs will simplify the issues in this case” and
`
`Samsung’s reliance on the USPTO’s trial statistics are speculative where the PTAB has not
`
`instituted seven of the eight IPRs. Mot. at 8. Further, Samsung’s argument that if the PTAB
`
`invalidates certain asserted claims, this will “inform the proper construction of claim terms, as well
`
`as the issues of infringement and invalidity,” is unpersuasive given that the Claim Construction
`
`Memorandum and Order has been issued. Mot. at 9.
`
`Even assuming each of Samsung’s petitions were instituted, the Institution Decisions
`
`would still be subject to motions for reconsideration and the Final Written Decisions would come
`
`months to nearly a year after the Court’s pretrial conference and trial dates. “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., No. 2:09-cv-242, Dkt. 250 at 3 (E.D. Tex. Jan. 23, 2012) (citing EMG
`
`Tech., Inc. v. Apple Inc., No. 6:09-cv-367, Dkt. 270 at 5 (E.D. Tex. Nov. 15, 2010)). Nonetheless,
`
`“district courts have no role in reviewing the PTAB’s determinations regarding the patentability
`
`8
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 14 of 16 PageID #: 9026
`
`of claims.” KIPB, 2019 WL 6173365, at *2.
`
`Samsung bears the burden of demonstrating that “every asserted claim has a reasonable
`
`likelihood of being invalidated by the Court to grant Defendants’ Motion.” See Scorpcast, 2020
`
`WL 7631162, at *3. Samsung has not met its burden where the PTAB has not instituted all of
`
`Samsung’s IPRs. Id. (holding the simplification factor strongly weighs against a stay).
`
`V.
`
`CONCLUSION
`
`For all the foregoing reasons, Jawbone respectfully requests that Samsung’s Motion to Stay
`
`Proceedings Pending Inter Partes Review (Dkt. 106) be denied in its entirety.
`
`Dated: August 22, 2022
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /s/ Peter Lambrianakos
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`Richard M. Cowell
`NY Bar No. 4617759
`Email: rcowell@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`Texas State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`
`9
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 15 of 16 PageID #: 9027
`
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF
`JAWBONE INNOVATIONS, LLC
`
`10
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 133 Filed 08/22/22 Page 16 of 16 PageID #: 9028
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 22, 2022, all counsel of record who are
`
`deemed to have consented to electronic service are being served with a copy of this document via
`
`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
`
`
`
`/s/ Peter Lambrianakos
` Peter Lambrianakos
`
`
`
`