Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 1 of 19 PageID #: 778
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`NORTHSTAR SYSTEMS LLC,
`
`Plaintiff,
`
`v.
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`VOLKSWAGEN AG,
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`Defendant.
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`NORTHSTAR SYSTEMS LLC,
`
`Plaintiff,
`
`v.
`
`BAYERISCHE MOTOREN WERKE AG,
`
`Defendant.
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`
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`Case No. 2:22-cv-00486-JRG (Lead Case)
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`JURY TRIAL DEMANDED
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`Case No. 2:22-cv-00496-JRG (Member Case)
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`JURY TRIAL DEMANDED
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`DEFENDANT BAYERISCHE MOTOREN WERKE AG’S
`OPPOSED MOTION TO STAY
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 2 of 19 PageID #: 779
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`TABLE OF CONTENTS
`
`I.
`
`FACTUAL BACKGROUND ............................................................................................. 3
`
`A.
`
`B.
`
`BMW NA IPRs ....................................................................................................... 3
`
`The Instant Case ...................................................................................................... 4
`
`II.
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`LEGAL STANDARD ......................................................................................................... 4
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`III.
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`THE COURT SHOULD STAY THIS CASE .................................................................... 5
`
`A.
`
`B.
`
`C.
`
`D.
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`Factor 1: A Stay Will Simplify, if Not Resolve, the Issues in This Case. .............. 5
`
`Factor 2: A Lack of a Stay Would Create Hardships and Prejudice for both
`Parties. ..................................................................................................................... 7
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`Factor 3: There is No Prejudice to Either Party in Staying this Case. .................... 9
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`Factor 4: A Stay Would Limit the Burden of Litigation on the Court and
`the Parties. ............................................................................................................. 11
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`IV.
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`CONCLUSION ................................................................................................................. 12
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`
`
`i
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 3 of 19 PageID #: 780
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Anza Tech., Inc. v. Avant Tech., Inc.,
`No. A-17-CV-01193-LY, 2018 WL 11314191 (W.D. Tex. Nov. 15, 2018) .............................7
`
`Apex Beam Technologies LLC v. ZTE Corp.,
`No. 2:22-cv-00031-JRG-RSP, Dkt. No. 55 (E.D. Tex. Jun. 14, 2023)................................1, 14
`
`Armor All/STP Prod. Co. v. Aerospace Commc’ns Holdings Co.,
`No. 6:15-CV-781, 2016 WL 6397269 (E.D. Tex. Oct. 28, 2016) ...........................................10
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)..................................................................................................6
`
`Blephex LLC v. Pain Point Med. Sys. Inc,
`No. 3:16-CV-0410-N, 2016 WL 7839343 (N.D. Tex. Nov. 3, 2016) ...................................6, 7
`
`Clinton v. Jones,
`520 U.S. 681 (1997) ...................................................................................................................4
`
`CyWee Grp. Ltd. v. Samsung Elecs. Co.,
`No. 217-CV-00140, 2019 WL 11023976 (E.D. Tex. Feb. 14, 2019) ........................5, 6, 11, 12
`
`e-Watch Inc. v. Apple Inc.,
`No. 2:13-cv-01061-JRG-RSP, 2015 WL 12915668 (E.D. Tex. Mar. 25, 2015) .........1, 4, 8, 14
`
`e-Watch, Inc. v. Lorex Canada,
`No. H-12-3314, 2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) ....................................8, 11, 12
`
`Emp. L. Compliance, Inc. v. Compli, Inc.,
`No. 3:13-CV-3574-N, 2014 WL 3739770 (N.D. Tex. May 27, 2014) ..............................11, 12
`
`Huawei Techs. Co. Ltd. v. T-Mobile US, Inc.,
`No. 2:16-cv-00052-JRG-RSP, 2017 WL 4385567 (E.D. Tex. Sep. 9, 2017) ............................6
`
`Neuro Cardiac Techs., LLC v. LivaNova USA, Inc.,
`No. CV H-18-1517, 2018 WL 4901035 (S.D. Tex. Oct. 9, 2018)...............................5, 8, 9, 11
`
`NFC Tech. LLC v. HTC America, Inc.,
`No. 2:13-CV-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ......................4, 5, 10
`
`Norman IP Holdings, LLC v. TP-Link Techs., Co.,
`No. 6:13-CV-384-JDL, 2014 WL 5035718 (E.D. Tex. Oct. 8, 2014) .......................................5
`
`
`
`ii
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 4 of 19 PageID #: 781
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`Solas Oled Ltd. v. Samsung Display Co.,
`No. 2:19-cv-00152-JRG, 2020 WL 4040716 (E.D. Tex. Jul. 17, 2020)................................8, 9
`
`SSL Servs., LLC v. Cisco Sys., Inc,
`No. 2:15-CV-433-JRG-RSP, 2016 WL 3523871 (E.D. Tex. June 28, 2016) ..........................10
`
`Stragent LLC v. BMW of N. Am., LLC,
`No. 6:16-CV-446, 2017 WL 3709083 (E.D. Tex. July 11, 2017) ...........................................10
`
`SynQor, Inc. v. Vicor Corp.,
`No. 2:14-CV-287-RWS-CMC, 2015 WL 12916396 (E.D. Tex. Nov. 24, 2015) ....................10
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)................................................................................................10
`
`
`
`
`
`iii
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 5 of 19 PageID #: 782
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`Defendant Bayerische Motoren Werke AG (“BMW AG” or “Defendant”) moves to stay
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`the above-captioned litigation pending resolution of related proceedings between BMW North
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`America, LLC and NorthStar Systems LLC (“NorthStar” or “Plaintiff”) before the Patent Trial
`
`and Appeal Board (“the PTAB”). See Bayerische Motoren Werke AG v. NorthStar Systems LLC,
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`IPR2023-01190 (PTAB); Bayerische Motoren Werke AG v. NorthStar Systems LLC, IPR2023-
`
`00890 (PTAB); Bayerische Motoren Werke AG v. NorthStar Systems LLC, IPR2023-00934
`
`(PTAB); Bayerische Motoren Werke AG v. NorthStar Systems LLC, IPR2023-01049 (PTAB);
`
`Bayerische Motoren Werke AG v. NorthStar Systems LLC, IPR2023-01017 (PTAB); Bayerische
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`Motoren Werke AG v. NorthStar Systems LLC, IPR2023-01191 (PTAB) (collectively, “the
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`IPRs”).
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`During the meet and confer on this Motion to Stay, citing Apex Beam Technologies LLC
`
`v. ZTE Corp., No. 2:22-cv-00031-JRG-RSP, Dkt. No. 55 (E.D. Tex. Jun. 14, 2023), NorthStar
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`alleges that the present motion is premature and unnecessary. However, this Court has indicated
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`that it can consider the timing of an early motion to stay pending the resolution of Inter Partes
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`Review challenges, even before institution, to indicate diligence. e-Watch Inc. v. Apple Inc., No.
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`2:13-cv-01061-JRG-RSP, 2015 WL 12915668, at *3 (E.D. Tex. Mar. 25, 2015). When the IPRs
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`in this case are instituted, BMW AG will be in the exact position as the defendant in e-Watch
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`Inc., because it will have been diligent in filing an early motion to stay pending the IPRs, it will
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`be well before a claim construction hearing, and fact and expert discovery will not have closed.
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`See Dkt. No. 57. NorthStar’s citation to Apex Beam Technologies is unavailing, because nothing
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`in that case contradicts the Court’s determinations in e-Watch and others that a party shows
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`diligence by filing an early motion to stay pending IPRs, even before institution. Accordingly,
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`BMW AG files the present motion in accordance with this Court’s practices.
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`1
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 6 of 19 PageID #: 783
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`Turning to the four factors, each factor favors a stay. First, Judicial economy supports
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`staying this case pending resolution of the IPRs at least because it will simplify the issues in this
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`case. The IPRs are currently awaiting institution, which is expected in 3-6 months. The IPRs
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`include challenges to all asserted claims of all asserted patents, U.S. Patent Nos. 6,898,432,
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`8,805,416, 8,032,297, 8,478,527, and 8,014,943 (collectively, “the Asserted Patents”). If the final
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`written decisions invalidate one or more challenged claims, the issues before this Court will be
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`significantly narrowed and simplified. Even if some claims survive, the IPRs will be informative
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`for issues of claim construction and claim scope.
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`Second, this case is in its infancy. Discovery has not begun, and the parties have not
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`completed the exchange of initial disclosures. As of the scheduling hearing for this case that
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`occurred on July 20, 2023, a claim construction hearing was set for May 16, 2024 and a trial was
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`set for November 18, 2024, both of which will occur long after institution of the IPRs. Further,
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`exchange of initial disclosures, fact depositions, claim construction briefing, and expert
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`discovery have not occurred.
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`Third, no party would be prejudiced by a stay. NorthStar Systems LLC (“NorthStar” or
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`“Plaintiff”) is not seeking a preliminary injunction and it may still pursue monetary relief once
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`the stay is lifted. The PTAB is likely to issue most institution decisions before the end of 2023,
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`and all institution decisions before mid-February 2024. In the event the PTAB does not institute
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`any of the IPRs, then the stay will be limited to a few months and would then resume, resulting
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`in a small delay.
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`Fourth, granting the stay will avoid the possibility of two separate outcomes and
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`significantly reduce the burdens on the parties and this Court. While the IPRs are pending
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`institution, the parties will be required to expend significant time and resources to prepare
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`2
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 7 of 19 PageID #: 784
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`discovery requests, subpoenas, interrogatory responses, document production, offensive and
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`defensive fact witness depositions, and claim construction briefing. Further, the Court will also
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`be required to address invalidity, subject matter eligibility, claim construction, as well as other
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`possible motion practice. Granting a stay will result in minimal delay and avoid unnecessary
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`time and resource expenditure.
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`Because each factor favors a stay, Defendants respectfully requests that the Court stay
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`this action pending resolution of the IPRs.
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`I.
`
`FACTUAL BACKGROUND
`
`A.
`
`BMW NA IPRs
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`BMW of North America LLC (“BMW NA”) filed the IPRs on the indicated dates:
`
`Filing Date
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`Case Style
`
`U.S. Patent No.
`
`Challenged
`Claims
`1-30
`(all claims)
`
`1-30
`(all claims)
`
`1-26
`(all claims)
`
`1-8
`(all claims)
`
`1, 3-6, 9-13, 17-
`19
`
`1, 2, 7, 8, 11,
`14-16, 20-35
`
`8,032,297
`
`8,478,527
`
`8,014,943
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`6,898,432
`
`8,805,416
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`8,805,416
`
`May 5, 2023
`
`June 9, 2023
`
`Bayerische Motoren Werke AG v.
`NorthStar Systems LLC, IPR2023-
`00890 (PTAB).
`May 26, 2023 Bayerische Motoren Werke AG v.
`NorthStar Systems LLC, IPR2023-
`00934 (PTAB).
`Bayerische Motoren Werke AG v.
`NorthStar Systems LLC, IPR2023-
`01017 (PTAB).
`July 19, 2023 Bayerische Motoren Werke AG v.
`NorthStar Systems LLC, IPR2023-
`01049 (PTAB).
`Bayerische Motoren Werke AG v.
`NorthStar Systems LLC, IPR2023-
`01190 (PTAB).
`Bayerische Motoren Werke AG v.
`NorthStar Systems LLC, IPR2023-
`01191 (PTAB).
`
`August 3,
`2023
`
`August 3,
`2023
`
`
`
`3
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 8 of 19 PageID #: 785
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`Most institution decisions are expected before the end of 2023, and all institution
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`decisions are expected before February 3, 2024.1 Most final written decisions are expected by the
`
`end of 2024, and all final written decisions are expected by February 2025.
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`B.
`
`The Instant Case
`
`NorthStar filed suit against BMW AG on December 27, 2022. Dkt. No. 1. BMW AG
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`filed a motion to dismiss under Rules 12(b)(6) and 12(b)(7). Dkt. No. 26. A scheduling
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`conference occurred on July 20, 2023. Dkt. No. 57. At the conference, the Court set a claim
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`construction hearing for May 16, 2024, and a trial start date of November 18, 2024.
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`II.
`
`LEGAL STANDARD
`
`The power to stay proceedings stems from the district court’s inherent ability to control
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`its own docket. Clinton v. Jones, 520 U.S. 681, 706 (1997). “In deciding whether to stay
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`litigation pending patent reexamination and inter partes review, courts usually consider three
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`factors: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the
`
`nonmoving party; (2) whether a stay will simplify the issues in question and trial of the case; and
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`(3) whether discovery is complete and whether a trial date has been set.” e-Watch, 2015 WL
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`12915668, at *2. The courts may also consider a fourth factor: whether a stay, or the denial
`
`thereof, will reduce the burden of litigation on the parties and on the court. NFC Tech. LLC v.
`
`HTC America, Inc., No. 2:13-CV-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11,
`
`2015).
`
`A stay is “particularly justified where the outcome of the [administrative proceeding]
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`would be likely to assist the court in determining patent validity and, if the claims were canceled
`
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`1 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,757 (Aug. 14, 2012) (indicating that the
`Director will decide whether to institute a trial within 6 months or less from the filing date of the IPR
`petition).
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`4
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 9 of 19 PageID #: 786
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`in the [administrative proceeding], would eliminate the need to try the infringement issue.”
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`Norman IP Holdings, LLC v. TP-Link Techs., Co., No. 6:13-CV-384-JDL, 2014 WL 5035718, at
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`*2 (E.D. Tex. Oct. 8, 2014) (internal citations omitted); see also NFC Tech., 2015 WL 1069111
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`at *1.
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`III. THE COURT SHOULD STAY THIS CASE
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`Each factor strongly favors staying the case pending the outcome of the IPRs.
`
`A.
`
`Factor 1: A Stay Will Simplify, if Not Resolve, the Issues in This Case.
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`“The most important factor bearing on whether to grant a stay is whether the stay is likely
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`to simplify the issues at trial.” See CyWee Grp. Ltd. v. Samsung Elecs. Co., No. 217-CV-00140
`
`(WCB) (RSP), 2019 WL 11023976, at *7 (E.D. Tex. Feb. 14, 2019). This factor is easily met
`
`here, as institution of any or all of BMW AG’s IPR petitions, would simplify the issues at trial.
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`First, BMW AG has filed IPR petitions challenging all five Asserted Patents and all
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`claims (including, of course, all asserted claims). BMW AG believes that the IPRs are likely to
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`eliminate all of the asserted claims and therefore significantly simplify the scope of the issues
`
`before the Court. See Norman IP Holdings, 2014 WL 5035718 at *3 (granting stay pending IPRs
`
`where “the PTAB’s determination of the validity of all the asserted claims of the three patents-
`
`in-suit could narrow the issues before the court, prevent duplicative or unnecessary discovery,
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`and encourage settlement or dismissal”); see also Neuro Cardiac Techs., LLC v. LivaNova USA,
`
`Inc., No. CV H-18-1517, 2018 WL 4901035, at *3 (S.D. Tex. Oct. 9, 2018) (“If any or all of the
`
`claims is found invalid, [the] case fails or is simplified.”). Thus, a stay is likely to simplify
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`discovery related to prior art, any dispositive briefing on invalidity and the trial. See Norman IP
`
`Holdings, 2014 WL 5035718 at *3. This Court has even granted a stay when some, but not all,
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`IPRs had been instituted. NFC Tech. LLC v. HTC America, Inc., 2015 WL 1069111 (E.D. Tex.
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`Mar. 11, 2015).
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`5
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 10 of 19 PageID #: 787
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`Second, to the extent that any instituted claims survive IPR, BMW AG will be estopped
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`from raising prior art arguments that it raised or reasonably could have raised in those instituted
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`IPRs (see Blephex LLC v. Pain Point Med. Sys. Inc, No. 3:16-CV-0410-N, 2016 WL 7839343, at
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`*2 (N.D. Tex. Nov. 3, 2016) (internal citations omitted)), and NorthStar will be limited through
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`prosecution history estoppel and disclaimer to the positions it took during the proceedings. See,
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`e.g., Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017) (holding that
`
`“statements made by a patent owner during an IPR proceeding can be considered [by the district
`
`court] during claim construction and relied upon to support a finding of prosecution disclaimer”).
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`This Court previously found statements made in a Patent Owner’s Preliminary Response were
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`dispositive for purposes of granting summary judgment of non-infringement on the basis of
`
`prosecution disclaimer. See Huawei Techs. Co. Ltd. v. T-Mobile US, Inc., No. 2:16-cv-00052-
`
`JRG-RSP, 2017 WL 4385567, at *3–5 (E.D. Tex. Sep. 9, 2017), report and recommendation
`
`adopted, No. 2:16-cv-00052-JRG-RSP, 2017 WL 4310161 (E.D. Tex. Sep. 28, 2017).
`
`Third, a stay is likely to simplify issues because the PTAB will have offered its views
`
`about the construction of claim terms and other disputed issues, such as the priority dates of the
`
`patents. Even if the PTAB does not invalidate any of the claims in the pending IPR proceedings,
`
`“the expertise of the PTAB judges . . . is likely to be of considerable assistance to the Court.”
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`CyWee, 2019 WL 11023976 at *10. Specifically, the PTAB will consider and construe each of
`
`the asserted claims and patent owner’s positions taken about the claim scope during any IPR
`
`proceeding will become incorporated into the prosecution histories. Given that a scheduling
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`conference only occurred July 20, 2023, the claim construction hearing set for May 2024 will not
`
`have occurred by the institution decision by the end of 2023 for the earlier institution decisions
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`or by February 2024 for the later institution decisions. The exchange of proposed claim terms has
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`6
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 11 of 19 PageID #: 788
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`not begun, the stay would preserve the expenditure of significant resources relating to issues that
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`may be substantially altered, or rendered moot, by the IPR findings. See Blephex, 2016 WL
`
`7839343 at *2 (quoting Target Therapeutics, Inc. v. SciMed Life Sys., Inc., No. C-94-20775,
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`1995 WL 20470, at *2 (N.D. Cal. Jan. 13, 1995) (“waiting for the outcome of the reexamination
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`could eliminate the need for trial if the claims are cancelled or, if the claims survive, facilitate
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`trial by providing the court with expert opinion of the [US]PTO and clarifying the scope of the
`
`claims”).
`
`B.
`
`Factor 2: A Lack of a Stay Would Create Hardships and Prejudice for both
`Parties.
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`The nascent stage of this case weighs heavily in favor of a stay. BMW AG’s answer has
`
`not been filed because of the many flaws with NorthStar’s case. See Dkt. No. 26. The scheduling
`
`conference only occurred on July 20, 2023. Dkt. No. 57. The parties have yet to serve a single
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`discovery request or deposition notice. By the time the IPRs will likely be instituted, the parties
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`will have likely not even exchanged preliminary claim constructions, and the Court will not have
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`construed any claims. It would be an unnecessary expenditure of judicial and party resources to
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`go through the claim construction process for interpretations of claims that may be rendered
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`moot by impending PTAB decisions. Because BMW AG diligently filed most of its IPRs before
`
`even the scheduling conference in this case, and all of them within a short time thereafter, this
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`factor counsels strongly in favor of a stay.
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`A stay is especially appropriate here because the case is in its infancy. Critically, “no
`
`discovery has commenced.” Anza Tech., Inc. v. Avant Tech., Inc., No. A-17-CV-01193-LY,
`
`2018 WL 11314191, at *2 (W.D. Tex. Nov. 15, 2018) (emphasis added). The parties, therefore,
`
`“have not incurred any substantial burden associated with discovery or claim construction,” the
`
`“court has not scheduled further hearings or set dates for filing claim-construction submissions
`
`7
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 12 of 19 PageID #: 789
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`or briefs” and the “parties have not submitted dispositive motions.” Neuro Cardiac Techs., 2018
`
`WL 4901035 at *4.
`
`If this case were to proceed into discovery while the IPR petitions remain pending, both
`
`the parties and Court would be required to expend significant time and resources to litigate a case
`
`that could be “fundamentally altered” by the PTAB’s invalidity determinations. See e-Watch,
`
`Inc. v. Lorex Canada, No. H-12-3314, 2013 WL 5425298, at *2 (“[I]f the USPTO accepts the
`
`IPR petitions, the continuation of this litigation will likely result in the unnecessary expenditure
`
`of the parties’ and court’s time and resources on claims that may be fundamentally altered by the
`
`USPTO’s determination regarding the patents-in-suit.”) (S.D. Tex. Sept. 26, 2013); see also
`
`ACTi Corp., 2013 WL 6334372 at *7 (“[I]f the USPTO accepts inter partes review, continuing
`
`to prosecute this case is likely to result in the unnecessary expenditure of the parties’ and the
`
`Court's resources on claims and issues that could be resolved or changed as a result of the IPR
`
`proceedings.”). This would be inefficient, burdensome and ultimately unnecessary if the IPRs
`
`narrow the issues in the case.
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`Further, even if the Court denies without prejudice this motion, the Court has noted
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`diligence by filing of an early motion to dismiss. e-Watch Inc., 2015 WL 12915668, at *3. When
`
`the IPRs in this case are instituted, BMW AG will move again to stay this case and will have
`
`been diligent in filing an early motion to stay pending the IPRs. Solas Oled Ltd. v. Samsung
`
`Display Co., No. 2:19-cv-00152-JRG, 2020 WL 4040716 at *2 (E.D. Tex. Jul. 17, 2020) (citing
`
`e-Watch, 2015 WL 12915668 at *3). Indeed, institution of the Asserted Patents will occur by
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`February 2024, months before a claim construction hearing (May 2024) and the close of fact and
`
`expert discovery (July 2024, August 2024, respectively). See Dkt. No. 57. Thus, BMW AG will
`
`be in the position of the defendant of e-Watch, where the defendant had been diligent and the
`
`8
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`

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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 13 of 19 PageID #: 790
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`institution decisions were significantly ahead of critical deadlines of the case, and unlike the
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`defendant in Solas, where a claim construction order had issued and discovery had closed. Solas,
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`2020 WL 4040716 at *2. Accordingly, BMW AG must file the present motion in accordance
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`with this Court’s practices.
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`In light of this case’s early stage and the fact that virtually all litigation activities still lie
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`ahead, this factor weighs strongly in favor a stay.
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`C.
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`Factor 3: There is No Prejudice to Either Party in Staying this Case.
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`NorthStar will not be prejudiced by a stay. Any delay between now and the institution of
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`the IPRs is minimal, as the institution decisions are expected within the next approximately six
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`months. See Neuro Cardiac Techs., 2018 WL 4901035 at *1 (“The PTAB must either institute or
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`deny an inter partes review within six months after it sends a notice indicating that the petition
`
`has been granted a filing date.”). As courts have observed, “if the PTO declines inter partes
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`review, little time is lost, but if [the] PTO grants inter partes review, the promise is greater for an
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`important contribution by the PTO to resolution of the governing issues in the litigation.” ACTi
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`Corp., 2013 WL 6334372, at *8.
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`All of the Asserted Patents were issued years prior to the commencement of this
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`litigation, and NorthStar has been actively litigating against other companies for many years,
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`accusing various technologies of infringing various of NorthStar’s patents for which it has an
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`exclusive license. See, e.g., NorthStar Systems LLC v. Honda Motor Co., 2:22-cv-00143 (E.D.
`
`Tex. May 11, 2022); NorthStar Systems LLC v. HP Inc., 2:22-cv-00265 (E.D. Tex. Jul. 15,
`
`2022). While NorthStar filed suit against ZTE Corp. as early as 2020, NorthStar Systems LLC v.
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`ZTE Corp., 2:20-cv-00386 (E.D. Tex. Dec. 15, 2020), it did not bring any action against BMW
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`AG’s vehicles until the end of 2022. In view of the years delay in pursuing action against BMW
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 14 of 19 PageID #: 791
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`AG, there is no prejudice to NorthStar by a minimal delay of 3-6 months in waiting for
`
`institution decisions that could significantly simplify, if not moot, the entire case.
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`Furthermore, NorthStar will not be prejudiced by a stay because it is not a competitor of
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`BMW AG and has not sought a preliminary injunction. See Stragent LLC v. BMW of N. Am.,
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`LLC, No. 6:16-CV-446, 2017 WL 3709083, at *2 (E.D. Tex. July 11, 2017) (“[D]elay is not
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`inherently prejudicial when a party, as here, seeks only money damages and no injunctive
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`relief.”). Indeed, NorthStar does not produce any products related to navigation systems. Thus, a
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`stay would not impact the monetary damages that NorthStar would be entitled to if it were to
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`ultimately succeed on its purported infringement claims because the alleged harm can be
`
`rectified with damages. SynQor, Inc. v. Vicor Corp., No. 2:14-CV-287-RWS-CMC, 2015 WL
`
`12916396, at *4 (E.D. Tex. Nov. 24, 2015); see also VirtualAgility Inc. v. Salesforce.com, Inc.,
`
`759 F.3d 1307, 1318 (Fed. Cir. 2014) (a stay “only delays realization” of damages). And a “mere
`
`delay in collecting those damages does not constitute undue prejudice.” Armor All/STP Prod. Co.
`
`v. Aerospace Commc’ns Holdings Co., No. 6:15-CV-781, 2016 WL 6397269, at *2 (E.D. Tex.
`
`Oct. 28, 2016).
`
`Moreover, the bare assertion of patent rights is “present in every case in which a patentee
`
`resists a stay, and it is therefore not sufficient, standing alone, to defeat a stay motion.” NFC
`
`Tech., 2015 WL 1069111 at *2; SSL Servs., LLC v. Cisco Sys., Inc, No. 2:15-CV-433-JRG-RSP,
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`2016 WL 3523871, at *2 (E.D. Tex. June 28, 2016). Without a particularized showing of harm,
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`“the delay inherent in granting a stay does not constitute undue prejudice.” SynQor, 2015 WL
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`12916396, at *4.
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`Further underscoring the absence of prejudice is the fact that BMW AG promptly filed
`
`IPR petitions early in this litigation, before or near the initial case scheduling conference. See
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 15 of 19 PageID #: 792
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`Neuro Cardiac Techs., 2018 WL 4901035 at *3 (finding no prejudice where petitioner filed
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`promptly because the stay motion did not appear to be a “dilatory tactic”). BMW AG’s diligence
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`in filing the IPR petitions will prevent any undue or unnecessary delay.
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`Finally, even if there were some prejudice to NorthStar in granting a stay (which there is
`
`not), any delay from a stay would be reasonable because of the benefits from PTAB review. The
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`IPR process was designed to create a more efficient, timely and cost-effective alternative to
`
`litigation. See Lorex Canada, 2013 WL 5425298 at *2. If any of the IPRs are instituted, they are
`
`likely to advance the case when it returns to this Court. And if none of the IPRs are instituted,
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`then any delay will be short. Accordingly, this factor also weighs in favor of stay.
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`D.
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`Factor 4: A Stay Would Limit the Burden of Litigation on the Court and the
`Parties.
`
`A stay is also appropriate because it will reduce the burden on the parties and Court. See,
`
`e.g., CyWee, 2019 WL 11023976 at *2 (noting that “special attention should be given to
`
`minimizing the burdens of litigation”). The substantial benefit of simplifying a majority of the
`
`issues in the case and relieving the substantial burden on the parties and Court warrants the
`
`minimal delay that is inherent in a stay. Emp. L. Compliance, Inc. v. Compli, Inc., No. 3:13-CV-
`
`3574-N, 2014 WL 3739770, at *2 (N.D. Tex. May 27, 2014) (“In the event that the PTO grants
`
`[the] petition . . . continuing the litigation would result in the unnecessary duplication of efforts
`
`and expenses to resolve the same issues . . . [but] if the PTO denies the petition, the stay will be
`
`short.”). Discovery requests will likely soon be served in this case, at which point there will be
`
`numerous upcoming deadlines that will require the parties and Court to expend significant
`
`amounts of time and resources in this case, particularly in comparison to the minimal investment
`
`to date.
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 16 of 19 PageID #: 793
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`In the next eight months alone, the parties will be required to exchange contentions and
`
`propose claim terms for construction and preliminary claim constructions. And over the next
`
`year, the parties are likely to complete the exchange of contentions, fact discovery including fact
`
`witness depositions, expert discovery including expert depositions, and all claim construction
`
`briefing. The Court is likely to engage with the parties at numerous junctures, including in
`
`preparation for a claim construction hearing and in construing the disputed claim terms. If the
`
`PTAB were to institute review of one or more of the Asserted Patents in the next four months,
`
`the result would be two parallel proceedings between the district court and PTAB that risk
`
`duplicative discovery, inconsistent claim construction rulings and unnecessary expenditures by
`
`both the parties and Court on claims that may ultimately be invalidated. See, e.g., Compli, Inc.,
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`2014 WL 3739770 at *2 (describing series of wasteful and duplicative efforts that would result
`
`in a significant waste of the court’s resources and time if litigation were not stayed); see also
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`Lorex Canada, 2013 WL 5425298 at *2 (citing potential for unnecessary expenditures of Court
`
`and party resources if litigation were not stayed); ACTi Corp., 2013 WL 6334372, at *7 (same).
`
`Granting a stay would significantly preserve judicial and litigant resources and prevent
`
`unnecessary complication of the issues in this case. See CyWee, 2019 WL 11023976 at *9 (citing
`
`the “possibility of inconsistent results between the administrative agency and the court” as basis
`
`for granting stay). The undue burden that would be imposed on both the parties and this Court
`
`would be easily avoided by staying the case at this juncture.
`
`IV. CONCLUSION
`
`For the reasons set forth above, BMW AG’s motion to stay this case should be granted.
`
`
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 17 of 19 PageID #: 794
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`Dated: August 11, 2023
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Lionel M. Lavenue
`
`
`
`
`
`Lionel M. Lavenue
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-6023
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`
`ATTORNEY FOR DEFENDANT
`BAYERISCHE MOTOREN WERKE AG
`
`
`
`
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 18 of 19 PageID #: 795
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`
`
`CERTIFICATE OF CONFERENCE
`
`I hereby certify that counsel for Defendant Bayerische Motoren Werke AG have met and
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`conferred with counsel for Plaintiff and Defendant Volkswagen AG, regarding this motion. A
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`conference between the undersigned and Plaintiff’s counsel, Vincent Rubino, was a telephonic
`
`conference on August 10, 2023. Plaintiff’s counsel informed me Plaintiff opposes the motion.
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`Plaintiff’s counsel cites the Court’s dismissal without prejudice of a motion pending IPRs in Apex
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`Beam Technologies LLC v. ZTE Corp., No. 2:22-cv-00031-JRG-RSP, Dkt. No. 55 (E.D. Tex. Jun.
`
`14, 2023). BMW AG’s counsel, the undersigned, noted the Court’s determination of diligence by
`
`a defendant based on an early motion to stay pending IPRs that have not been instituted. e-Watch
`
`Inc. v. Apple Inc., No. 2:13-cv-01061-JRG-RSP, 2015 WL 12915668, at *3 (E.D. Tex. Mar. 25,
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`2015). The parties have conclusively ended in an impasse, leaving an open issue for the Court to
`
`resolve. Volkswagen AG takes no position. Thus, the requirement in Local Rule CV-7(h); and (2)
`
`is met.
`
`
`
`
`
`
`/s/ Lionel M. Lavenue
`Lionel M. Lavenue
`
`
`
`
`
`
`
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`14
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`Case 2:22-cv-00486-JRG Document 64 Filed 08/11/23 Page 19 of 19 PageID #: 796
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 11, 2023, I electronically filed the foregoing Motion to
`
`Stay with the Clerk of Court using the CM/ECF system, which will send a notification of
`
`electronic filing (“NEF”) to counsel of record who have appeared in this case on behalf of the
`
`identified parties.
`
`
`
`
`
`/s/ Lionel M. Lavenue
`
`
`
`
`
`Lionel M. Lavenue
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-6023
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`
`ATTORNEY FOR DEFENDANT
`BAYERISCHE MOTOREN WERKE AG
`
`
`15
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`