Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 1 of 9 PageID #: 9792
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`JAWBONE INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`Case No. 2:21-cv-00186-JRG-RSP
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`JURY TRIAL DEMANDED
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`Defendants.
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`PLAINTIFF JAWBONE INNOVATIONS, LLC’S SUR-REPLY IN FURTHER
`OPPOSITION TO DEFENDANTS SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA, INC.’S
`MOTION TO STAY PROCEEDINGS PENDING INTER PARTES REVIEW (DKT. 106)
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 2 of 9 PageID #: 9793
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`TABLE OF CONTENTS
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`Page(s)
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`THE ISSUES IN THIS CASE WILL NOT BE SIMPLIFIED ........................................... 1
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`THE CASE IS IN AN ADVANCED STAGE WITH TRIAL QUICKLY
`APPROACHING ................................................................................................................ 3
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`JAWBONE WILL BE UNDULY PREJUDICED BY A STAY........................................ 3
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`CONCLUSION ................................................................................................................... 4
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`I.
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`II.
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`III.
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`IV.
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`i
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 3 of 9 PageID #: 9794
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-cv-00390-RWS-RSP, 2019 WL 3826051 (E.D. Tex. Aug. 14, 2019) ...........1, 2, 3, 4
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`Realtime Data LLC v. Actian Corp.,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June 14, 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) .................................3
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`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...............................................................................................................2
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`ii
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 4 of 9 PageID #: 9795
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`Jawbone has demonstrated that the relevant stay factors weigh against a stay. A single
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`institution decision against a patent which is no longer asserted in this case does not favor staying
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`the entirety of this litigation, particularly where the remaining institution decisions are not due
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`until at least pretrial disclosures have been exchanged. Samsung now submits that the appropriate
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`timeframe for assessing its Motion would be August 8, 2022. Reply at 1. If indeed Samsung
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`intends to rely on August 8, 2022 as the relevant timeframe, then it must concede that it relies on
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`no relevant institution decisions in support of its Motion and less than one month of fact discovery
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`remains.
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`With the close of fact discovery less than one week away, the parties have invested
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`significant resources in conducting discovery, preparing for expert reports, and preparing for trial.
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`A stay would needlessly delay the trial indefinitely, where Samsung has not demonstrated that
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`institution will be granted against each of the Asserted Patents, and the Final Written Decisions to
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`come well after trial has already been conducted in this case. Further, Samsung seeks a stay
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`pending “final resolution of the IPRs filed by Defendants,” demonstrating that it seeks an indefinite
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`stay of the litigation, including through any appeals. Accordingly, Jawbone respectfully requests
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`this Court deny Samsung’s Motion.
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`I.
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`THE ISSUES IN THIS CASE WILL NOT BE SIMPLIFIED
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`Samsung’s allegations that the IPRs will result in simplification is speculative. None of
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`the IPRs against the six patents which are currently asserted in this case have been instituted, and
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`any institution decisions are months away. Samsung seeks not only a stay pending the institution
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`decisions but final disposition of the IPRs, which would come well after trial has been completed
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`in this case. In Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 2:18-cv-00390-RWS-RSP,
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`2019 WL 3826051, at *2 (E.D. Tex. Aug. 14, 2019), the Court held that a stay would not
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`significantly simplify the issues of the litigation where: (1) no institution decision was made for
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 5 of 9 PageID #: 9796
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`all Asserted Patents; (2) SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), precludes the PTAB from
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`instituting IPRs for only a portion of the patent claims so “any institution decision occurring after
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`SAS provides a weaker inference that the PTAB will determine that all challenged claims are
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`unpatentable;” and (3) the scope of defendant’s invalidity contentions is significantly broader than
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`the invalidity theories presented for IPR proceedings.
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`First, Samsung does not address the fact that there are no institution decisions for seven
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`IPR petitions. Reply at 5. “Courts in this district have often concluded that the simplification
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`factor weighed against a stay where the PTAB had not instituted IPR proceedings for all asserted
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`patents.” Peleton, 2019 WL 3826051, at *2. This suggests that a stay is “not appropriate.” Id.
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`Second, in SAS, the Supreme Court stated the PTAB “must address every claim the
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`petitioner has challenged.” 138 S. Ct. at 1354. As the PTAB is not required to institute IPR
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`proceedings as to all challenged claims, “institution decisions are not as useful as they were in the
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`past for providing an indication of whether all claims would be found unpatentable.” Peloton,
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`2019 WL 3826051, at *2. However, unlike Peloton, the PTAB has not instituted IPR proceedings
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`for a single currently-asserted patent and accordingly, there is no “inference that a stay would
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`simplify the case to some degree.” Id. at 3.
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`Third, Samsung’s invalidity theories under 35 U.S.C. §§ 101 102, 103, 112(1), and 112(2)
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`remain in the case, “suggesting that a stay would not significantly simplify the issues in the present
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`case.” Id. There remains prior art that Samsung has not submitted in its IPR petitions and
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`accordingly, the scope of Samsung’s invalidity theories is “significantly larger than the scope of
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`the invalidity theories presented in the instituted IPRs.” Id. Thus, a stay would not result in
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`simplification of the case.
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`2
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 6 of 9 PageID #: 9797
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`II.
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`THE CASE IS IN AN ADVANCED STAGE WITH TRIAL QUICKLY
`APPROACHING
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`Samsung cannot deny that it waited in filing its IPR petitions over the course of nine
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`months. Samsung offers no explanation for its delay in filing its IPR petitions, where the last of
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`its IPR petitions was filed July 27, 2022, and this Motion was filed with less than one month
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`remaining in fact discovery, after the completion of the parties’ claim construction briefing, and
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`following the Court’s Markman hearing. See Dkt. 58.
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`While Samsung alleges that a significant amount of work remains in this case, this Court
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`has held that where “a significant portion of discovery had already been conducted as of that date,”
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`this factor “has little impact on the analysis” where the other factors weigh much more strongly
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`against a stay. Peloton, 2019 WL 3826051, at *5. Further, final written decisions would come
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`months to nearly a year after the trial date in this case. Dkt. 133 at 5.
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`III.
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`JAWBONE WILL BE UNDULY PREJUDICED BY A STAY
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`Samsung relies solely on the argument that Jawbone does not compete with Samsung.
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`However, this Court has rejected arguments that a plaintiff will not be prejudiced because it is not
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`currently practicing the patents or seeking a preliminary injunction. See Rembrandt Wireless
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`Techs., LP v. Samsung Elecs. Co., No. 2:13CV213-JRG-RSP, 2015 WL 627887, at *2 (E.D. Tex.
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`Jan. 29, 2015) (“[T]he mere fact that Rembrandt is not currently practicing the patents does not
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`mean that, as a matter of law, it is not prejudiced by a substantial delay of an imminent trial date.”).
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`Any delay resulting from the completion of each of Samsung’s IPR petitions is significant. See
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`Realtime Data LLC v. Actian Corp., No. 6:15-CV-463-RWS-JDL, 2016 WL 3277259, at *2 (E.D.
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`Tex. June 14, 2016) (explaining the potential delay awaiting completion of the UPSTO and PTAB
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`proceeding and Federal Circuit appeals and finding that delay weighed against a stay). A final
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`determination for each of the IPR petitions would not be made until after completion of the trial in
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`3
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 7 of 9 PageID #: 9798
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`this case, “and this fact suggests that the prejudice factor should weigh against a stay.” Peloton,
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`2019 WL 3826051, at *4. Further, a stay “may still significantly delay resolution of the issues in
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`this case due to the appellate process.” Id. Accordingly, there is a “significant possibility” that
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`the final determinations would be appealed, which would result in a considerable delay. As such,
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`this factor weighs against a stay.
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`IV. CONCLUSION
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`For all the foregoing reasons, Jawbone respectfully requests that Samsung’s Motion to Stay
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`Proceedings Pending Inter Partes Review (Dkt. 106) should be denied in its entirety.
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`Dated: September 6, 2022
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`Respectfully submitted,
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` /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
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`4
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 8 of 9 PageID #: 9799
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`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`ATTORNEYS FOR PLAINTIFF
`JAWBONE INNOVATIONS, LLC
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`5
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`Case 2:21-cv-00186-JRG-RSP Document 175 Filed 09/06/22 Page 9 of 9 PageID #: 9800
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 6, 2022, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Peter Lambrianakos
` Peter Lambrianakos
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