Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 1 of 10 PageID #: 9550
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`JAWBONE INNOVATIONS, 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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`CASE NO. 2:21-cv-00186-JRG
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`JURY TRIAL DEMANDED
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`DEFENDANTS SAMSUNG ELECTRONICS CO., LTD.’S
`AND SAMSUNG ELECTRONICS AMERICA, INC.’S
`REPLY ISO MOTION TO STAY PROCEEDINGS PENDING INTER PARTES REVIEW
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 2 of 10 PageID #: 9551
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`Table of Contents
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`Significant Work Remains in This Case ............................................................................. 1
`A Stay Would Not Unduly Prejudice Jawbone................................................................... 3
`A Stay Will Simplify the Issues .......................................................................................... 4
`Conclusion .......................................................................................................................... 5
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`I.
`II.
`III.
`IV.
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`i
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 3 of 10 PageID #: 9552
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-CV-00359-JRG, 2021 WL 465424 (E.D. Tex. Feb. 9, 2021) ....................................2
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`BarTex Rsch. LLC v. FedEx Corp.,
`611 F. Supp. 2d 647 (E.D. Tex. Apr. 20, 2009) .........................................................................3
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`KIPB LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-cv-56-JRG-RSP, 2019 WL 6173365 (E.D. Tex. Nov. 20, 2019) ..........................3
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`Longhorn HD LLC v. NetScout Sys., Inc.,
`No. 2:20-cv-00349-JRG, 2022 WL 71652 (E.D. Tex. Jan. 6, 2022) .........................................2
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`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-cv-390-RWS-RSP, 2019 WL 3826051 (E.D. Tex. Aug. 14, 2019) ...........................2
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`Personalweb Techs. LLC v. Int’l Bus. Mach. Corp.,
`No. 6:12-CV-661-JRG, 2016 WL 7364672 (E.D. Tex. Jan. 28, 2016) .....................................3
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`Rembrandt Wireless Techs. LP v. Samsung Elecs. Co.,
`No. 2:13CV213-JRG-RSP, 2015 WL 627887 (E.D. Tex. Jan. 29, 2015) .................................4
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`Solas OLED Ltd. v. Samsung Display Co.,
`No. 2:19-cv-00152-JRG, 2020 WL 4040716 (E.D. Tex. July 17, 2020)...................................4
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`Stragent LLC v. BMW of N. Am.,
`LLC, No. 6:16-CV-446, 2017 WL 3709083 (E.D. Tex. July 11, 2017) ....................................2
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`Stragent, LLC v. BMW of N. Am.,
`No. 6:16-cv-446-RWS-KNM, 2017 WL 2839260 (E.D. Tex. Apr. 20, 2017) ......................2, 3
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`ThinkOptics, Inc. v. Nintendo of Am., Inc.,
`No. 6:11-CV-455, 2014 WL 4477400 (E.D. Tex. Feb. 27, 2014) .............................................3
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`TQ Delta, LLC v. CommScope Holding Co.,
`No. 2:21-CV-00310-JRG, 2022 WL 2872993 (E.D. Tex. July 21, 2022) .................................2
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`VirtualAgility Inc. v. Salesforce.com,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................3
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`ii
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 4 of 10 PageID #: 9553
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`Samsung’s motion to stay pending inter partes review (IPR) should be granted. As
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`Samsung’s motion explained, all of the factors pertinent to the Court’s analysis favor a stay—
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`namely, (1) Jawbone will not suffer undue prejudice by a stay because it is not a competitor, (2)
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`the case is in its early stages, and (3) the IPR proceedings will simplify the issues in this case.
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`Samsung diligently filed its IPRs (which include eight IPRs challenging all claims of all Asserted
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`Patents) and further diligently filed its Motion to Stay Pending Inter Partes Review (Dkt. 106) less
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`than two weeks after filing the last of its IPRs. Notably, Plaintiff agrees that the date on which
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`Samsung filed its Motion to Stay—August 8, 2022—is the appropriate frame of reference for
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`evaluating the stay factors. Dkt. 133 at 4. As of that date, a claim construction order had not yet
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`issued, the close of fact discovery was almost a month away, and at least 28 possible depositions
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`had yet to be taken. Even now, significant work still remains. On August 29, Samsung deposed
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`the first of Jawbone’s five 30(b)(6) designees and a third-party inventor. On August 30 or later, at
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`least eight witnesses are calendared or will be calendared for deposition—at least two of which
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`will be deposed on two separate days.1 Both Samsung and Jawbone have also subpoenaed several
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`other third parties who may be deposed. The parties have not yet served expert reports, and
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`dispositive motions and pretrial motion practice is still months away. The balance of relevant stay
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`factors clearly favors staying this case pending final resolution of the IPRs filed by Defendants.
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`I.
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`Significant Work Remains in This Case
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`Jawbone does not dispute that significant work remains in this case—instead focusing on
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`the work already completed. See Dkt. 133 at 4-5. There is no reasonable debate, however, that a
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`very significant amount of work remains to be completed because fact discovery has not closed,
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`1 Samsung has also filed a motion to compel two of Jawbone’s 30(b)(6) designees to be made available for two days
`(fourteen hours) of deposition time each.
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`1
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 5 of 10 PageID #: 9554
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`expert reports have not been exchanged, and dispositive and pre-trial briefing is still months away.
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`Indeed, in analyzing this factor, this Court has recognized as relevant the fact that “significant
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`resources [are] yet to be expended by the parties” even after all these deadlines had passed. AGIS
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`Software Dev. LLC v. Google LLC, No. 2:19-CV-00359-JRG, 2021 WL 465424, at *3 (E.D. Tex.
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`Feb. 9, 2021). Staying the case now will undoubtedly conserve both the parties’ and this Court’s
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`resources.
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`Jawbone cites several cases in support of its position; however, the majority of the cited
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`cases are plainly distinguishable. In Longhorn HD LLC v. NetScout Sys., Inc., No. 2:20-cv-00349-
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`JRG, 2022 WL 71652 (E.D. Tex. Jan. 6, 2022), an ex parte reexamination—which unlike an IPR
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`has no statutory deadline to be completed—had been instituted and defendant sought a stay after
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`completion of fact discovery. Here, the case is at an earlier stage and the stay is based on an IPR,
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`which must be completed within a year of institution. In TQ Delta, LLC v. CommScope Holding
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`Co., No. 2:21-CV-00310-JRG, 2022 WL 2872993 (E.D. Tex. July 21, 2022), only a partial stay
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`based on litigation in another district was requested. Here, Samsung requests a complete stay
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`pending final resolution of its IPRs, which has the potential to greatly simplify the issues in this
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`case. In Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 2:18-cv-390-RWS-RSP, 2019 WL
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`3826051 at *5 (E.D. Tex. Aug. 14, 2019), “[t]he state of the case factor [did] not significantly
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`impact the analysis.”
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`Finally, in Stragent, LLC v. BMW of N. Am., No. 6:16-cv-446-RWS-KNM, 2017 WL
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`2839260 (E.D. Tex. Apr. 20, 2017), the Court first found the prejudice factor neutral because the
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`plaintiff did not compete with the defendants. Id. at *2. The Court then found that the case was in
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`a “nascent stage,” which favored a stay. Id. However, because the IPRs were not instituted, the
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`Court denied the motion to stay without prejudice. Id. at *3. Samsung respectfully submits that
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`2
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 6 of 10 PageID #: 9555
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`Stragent is not dispositive and that the balance of the factors here (i.e., the significant work left to
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`be done, the lack of prejudice to non-competitor Jawbone, and the potential for issue simplification
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`across all six Asserted Patents) strongly weighs in favor of a stay. Nevertheless, if the Court is
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`inclined to deny Samsung’s request at this time because the IPRs are not yet instituted, the Court’s
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`denial should likewise be without prejudice. Notably, upon institution of IPRs in Stragent, the
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`Court stayed the case less than three months later. Stragent LLC v. BMW of N. Am., LLC, No. 6:16-
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`CV-446, 2017 WL 3709083, at *3 (E.D. Tex. July 11, 2017).
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`II.
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`A Stay Would Not Unduly Prejudice Jawbone
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`Jawbone would not be unduly prejudiced by a stay. Jawbone does not compete with
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`Samsung, a fact underscored by its August 12, 2022 supplemental response to Samsung’s
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`Interrogatory No. 11 (“Jawbone has no revenue related to the Patents-in-Suit. Jawbone does not
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`contend that any products currently sold by Jawbone are covered by the Patents-in-Suit.”). Ex. 1.
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`Jawbone can be adequately compensated through monetary damages. See VirtualAgility Inc. v.
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`Salesforce.com, 759 F.3d 1307, 1318 (Fed. Cir. 2014). In this regard, Jawbone’s vague claim that
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`it will “suffer irreparable harm” rings hollow. Dkt. 133 at 7. Indeed, Courts in this District
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`recognize that “the timely enforcement of [the plaintiff's] patents is present in every case in which
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`a patentee resists a stay, and it is therefore not sufficient, standing alone, to defeat a stay motion.”
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`Stragent, 2017 WL 2839260 at *2.
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`Further, the cases Jawbone cites are again inapposite. In Personalweb Techs. LLC v. Int’l
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`Bus. Mach. Corp., No. 6:12-CV-661-JRG, 2016 WL 7364672 (E.D. Tex. Jan. 28, 2016), the
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`district court litigation had already been stayed pending IPR, unstayed after some claims were
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`found patentable, and the defendant was seeking another stay pending appeal of an IPR decision.
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`Here, the case has not been previously stayed and the IPRs have not reached a final written
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`decision.
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`3
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 7 of 10 PageID #: 9556
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`In ThinkOptics, Inc. v. Nintendo of Am., Inc., No. 6:11-CV-455, 2014 WL 4477400 (E.D.
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`Tex. Feb. 27, 2014), the patent owner competed with defendant and had a pending injunction
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`request. Here, as noted above, Jawbone admittedly does not compete with Samsung, and Jawbone
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`has not requested a preliminary injunction.
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`In BarTex Rsch. LLC v. FedEx Corp., 611 F. Supp. 2d 647 (E.D. Tex. Apr. 20, 2009) and
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`KIPB LLC v. Samsung Elecs. Co., No. 2:19-cv-cv-56-JRG-RSP, 2019 WL 6173365 (E.D. Tex.
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`Nov. 20, 2019), the patent office proceedings (inter partes re-examination and ex parte re-
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`examination, respectively) on which the stay requests were premised did not have a statutory
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`deadline. Here, a final written decision on Samsung’s IPRs must be issued within a year of
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`institution, so the stay would not be of indeterminate length.2
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`In Rembrandt Wireless Techs. LP v. Samsung Elecs. Co., No. 2:13CV213-JRG-RSP, 2015
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`WL 627887 (E.D. Tex. Jan. 29, 2015) the PTAB had declined to institute IPR as to some claims
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`of the asserted patents and plaintiff was only pursuing infringement of non-instituted claims. Here,
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`all claims of all asserted patents are challenged, and the PTAB has not declined to institute trial as
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`to any claims. And in Solas OLED Ltd. v. Samsung Display Co., No. 2:19-cv-00152-JRG, 2020
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`WL 4040716, at *2 (E.D. Tex. July 17, 2020), fact and expert discovery had already been
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`completed and patent owner contended that “it ha[d] incurred the majority of expenses associated
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`with th[e] litigation.” Here, neither fact discovery nor expert discovery has been completed, and
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`as explained above, a significant amount of work remains.
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`III. A Stay Will Simplify the Issues
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`2 In this regard, it should be noted that Samsung does not seek a stay of “indeterminate length” as Jawbone contends.
`Dkt. 133 at 6. Rather, Samsung seeks a stay pending final resolution of the IPRs filed by Defendants. Dkt. 106 at 9.
`The PTAB has a one year statutory deadline to issue a final written decision on an IPR after institution.
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`4
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 8 of 10 PageID #: 9557
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`As Samsung explained, any disposition by the PTAB is likely to simplify the proceedings.
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`Dkt. 106 at 8-9. If the PTAB invalidates the asserted claims, then a stay will have saved significant
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`time and resources for the Court and the parties. If only some of the claims are invalidated, then
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`IPR will have narrowed the issues and will also add prosecution history that may inform the proper
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`construction of claim terms, as well as the issues of infringement and invalidity. See NFC Tech.,
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`2015 WL 1069111, at *7 (“[A]ny disposition by the PTAB is likely to simplify the proceedings
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`before this Court.”). Further, regardless of the outcome of the IPRs, the IPRs will have added
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`prosecution history that may be relevant to issues of infringement and invalidity.
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`On this factor, Jawbone is incorrect that “institution decisions on a number of the IPR
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`petitions would not come until after the trial date.” Dkt. 133 at 1. Only the institution decision for
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`IPR2022-01323 against the ’691 patent is due, at latest, by February 8, 2023—just two days after
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`jury selection in this case is set to begin. Further, the IPRs that Samsung seeks to join its Copycat
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`IPRs to will receive institution decisions by December 9, 2022 and January 6, 2023, so this Court
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`will know one to two months before jury selection is set to begin whether trial against the ’080,
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`’357, and ’691 patents will be instituted (even if not necessarily with Samsung joining the
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`proceedings).
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`IV. Conclusion
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`For the foregoing reasons and as explained in Samsung’s Motion (Dkt. 106), the balance
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`of factors favors staying these proceedings. Samsung respectfully requests that the Court grant its
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`motion to stay this case pending final resolution of its IPRs.
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`DATE: August 30, 2022
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`Respectfully submitted,
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`/s/ Jin-Suk Park
`Jin-Suk Park
`jin.park@arnoldporter.com
`Ali R. Sharifahmadian
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 9 of 10 PageID #: 9558
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`ali.sharifahmadian@arnoldporter.com
`Paul Margulies
`paul.margulies@arnoldporter.com
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Telephone: (202) 942-5000
`Facsimile: (202) 942-5555
`
`Ryan M. Nishimoto
`ryan.nishimoto@arnoldporter.com
`Daniel S. Shimell
`daniel.shimell@arnoldporter.com
`ARNOLD & PORTER KAYE SCHOLER LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, CA 90017
`Telephone: (213) 243-4000
`Facsimile: (213) 243-4199
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`-and-
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`Melissa Smith
`melissa@gillamsmithlaw.com
`GILLAM & SMITH LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
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`Case 2:21-cv-00186-JRG-RSP Document 160 Filed 08/30/22 Page 10 of 10 PageID #: 9559
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 30, 2022, I electronically filed the foregoing Reply ISO
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`Motion to Stay Proceedings Pending Inter Partes Review, with the Clerk of the Court for the
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`Eastern District of Texas using the ECF System which will send notification to the registered
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`participants of the ECF System as listed on the Court’s Notice of Electronic Filing. A true and
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`correct copy of the foregoing document was also served by electronic mail on all counsel of record.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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