Case 2:21-cv-00463-JRG Document 604 Filed 06/13/24 Page 1 of 4 PageID #: 69221
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`NETLIST, INC.,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., and SAMSUNG SEMICONDUCTOR,
`INC.,
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`Plaintiff,
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`Defendants.
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`CIVIL ACTION NO. 2:21-CV-00463-JRG
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendants Samsung Electronics Co., Ltd., Samsung Electronics
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`America, Inc., and Samsung Semiconductor, Inc.’s (collectively, “Samsung”) Renewed Motion to
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`Stay (the “Motion”). (Dkt. No. 597.) In the Motion, Samsung argues that the Court should stay
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`this case pending final resolution of the inter partes review (“IPR”) of the asserted patents. (Id.)
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`Having considered the Motion and the subsequent briefing, and for the reasons stated herein, the
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`Court finds that the Motion should be DENIED.
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`I.
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`BACKGROUND
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`On August 30, 2022, Samsung moved to stay the case pending the resolution of the IPRs
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`of the asserted patents. (Dkt. No. 74.) The Court denied the motion on February 3, 2023. (Dkt. No.
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`195.) On April 12, 2023, Samsung filed a combined renewed motion to stay the case informing
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`the Court that the PTAB had instituted IPR of the remaining two asserted patents, the ʼ060 and
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`ʼ160 patents and arguing that the Court should stay the case. (Dkt. No. 454.) The Court denied the
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`renewed motion. (Dkt. No. 459.)
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`Case 2:21-cv-00463-JRG Document 604 Filed 06/13/24 Page 2 of 4 PageID #: 69222
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`In April 2023, the Court held a jury trial followed by a bench trial on Samsung’s equitable
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`defenses in May 2023. A Final Judgment was entered finding that Samsung infringed at least one
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`asserted claim of each of the asserted patents. (Dkt. No. 551.)
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`Between October 2023 and April 2024, Samsung informed the Court in multiple notices
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`that the PTAB determined that all asserted claims of the ’339, ʼ054, ʼ918, ʼ060, and ʼ160 patents
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`are invalid. The PTAB has now determined that all asserted claims in this case are invalid.
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`II.
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`DISCUSSION
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`Samsung argues that the case should be stayed in light of the PTAB rulings. Samsung
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`contends that a stay is warranted to “avoid wasted judicial and party effort” since the PTAB has
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`invalidated all asserted claims. (Dkt. No. 597 at 3.) Specifically, Samsung contends that staying
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`the case could obviate the need for the Court to address the parties’ pending post-trial motions.
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`(Id.) Samsung also contends that “[a]dditional support for staying the case appears in briefing for
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`Samsung’s prior motions to stay, which Samsung renews here.” (Id. at 4.)
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` In response, Netlist contends that the simplest and most efficient course of action is for
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`this Court to resolve the post-trial motions in this case and allow the Federal Circuit to determine
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`how to proceed on any appeals of both this case and the IPRs. (Dkt. No. 598.) Netlist argues that
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`the ultimate outcome of the IPRs will not simply any issues before this Court because “essentially
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`every issue has already been resolved.” (Dkt. No. at 2.) Netlist argues that “the focus of this factor
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`is on streamlining or obviating the trial by providing the district court with the benefit of the
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`PTAB’s consideration of the validity of the patents before either the court or the jury is tasked
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`with undertaking that same analysis (emphasis added).” (Id. (citing Smartflash LLC v. Apple,
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`Inc., 621 F.App’x 995, 1000 (Fed. Cir. 2015)). Since the jury already rendered its verdict, and
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`since the parties have already completed post-trial briefing—both of which bear on issues
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`Case 2:21-cv-00463-JRG Document 604 Filed 06/13/24 Page 3 of 4 PageID #: 69223
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`completely unrelated to the IPR proceedings—Netlist contends that staying this case pending
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`appeal of the final written decisions in the IPRs will not simplify issues in this case. (Id. at 3-4.)
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`Netlist also contends that the advanced stage of the case weighs strongly against a stay.
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`Netlist notes the great expense that both parties have expended over the last two years that would
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`be wasted by vacating or staying this action post-final judgment. (Id. at 4.) Netlist argues that such
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`a stay would impose immense prejudice on Netlist. (Id.) Netlist also disagrees that its patents have
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`now been rendered “worthless,” and Netlist argues that the PTAB’s final written decisions are no
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`more than non-final agency determinations, subject to appeal. (Id.)
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`In reply, Samsung argues that Netlist “ignore[s] the obvious efficiencies a stay would
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`provide so that Netlist might succeed in a race to judgment on invalid claims.” Samsung contends
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`that Netlist’s approach would have this Court and the parties “unnecessarily multiply their effort
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`by resolving the outstanding issues now, and then redo that work—or let it go to waste—once the
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`Federal Circuit reviews the PTAB’s IPR decisions.” (Dkt. No. 599 at 1.)
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`The Court agrees with Netlist. “District courts typically consider three factors when
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`determining whether to grant a stay pending inter partes review of a patent in suit: (1) whether the
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`stay will unduly prejudice the nonmoving party, (2) whether the proceedings before the court have
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`reached an advanced stage, including whether discovery is complete and a trial date has been set,
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`and (3) whether the stay will likely result in simplifying the case before the court.” NFC Techs.
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`LLC v. HTC Am., Inc., 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.). “Based
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`on th[ese] factors, courts determine whether the benefits of a stay outweigh the inherent costs of
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`postponing resolution of the litigation.” Id.
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`The Court is not persuaded that a stay is the simplest and most efficient course of action,
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`as Samsung contends. It is unclear how a stay would protect the parties from “unnecessarily
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`multiply[ing] their effort” on post-trial issues when the parties’ post-trial briefing has already
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`concluded and such relates to issues not to be addressed by the PTAB. The parties have expended
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`significant resources in this case, presenting their case to a jury and fully briefing post-trial issues,
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`which are now ripe for the Court’s ruling. In fact, the only step that remains in this case before all
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`issues are ready to be presented on appeal is the Court ruling on the few post-trial issues before
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`the Court. It is thus unclear how a stay would save the parties any expense.
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`This case is in a very advanced stage—post-jury trial, post-bench trial, post-final judgment,
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`and at the conclusion of post-trial briefing—which weighs heavily against a stay. Samsung would
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`have this Court freeze the litigation at the finish line to wait for appeals of agency determinations
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`that may or may not simplify the case. Such a stay would unduly prejudice Netlist. Further,
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`such a stay might, under these facts, wrongly signal that the function of the judicial branch is
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`somehow subservient to the executive branch. In balancing all of these considerations, the Court is
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`persuaded that the simplest and fairest course of action is for the Court to rule on the parties’ post-
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`trial motions and allow this case and the IPRs to be taken up and presented to the Federal
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`Circuit. This Court assumes and trusts that the Federal Circuit would do so in a manner where
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`both prior adjudications can be heard at the same time.
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`III.
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`CONCLUSION
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`For the reasons stated herein, the Court finds that the Renewed Motion to Stay (Dkt. No.
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`597) should be and hereby is DENIED.
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`So Ordered this
`Jun 13, 2024
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