Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 1 of 7 PageID #: 887
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`NORTHSTAR SYSTEMS LLC,
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`Plaintiff,
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`v.
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`VOLKSWAGEN AG,
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`Defendant.
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`NORTHSTAR SYSTEMS LLC,
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`Plaintiff,
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`v.
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`BAYERISCHE MOTOREN WERKE AG,
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`Defendant.
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`PLAINTIFF NORTHSTAR SYSTEMS LLC’S SUR-REPLY IN FURTHER
`OPPOSITION TO DEFENDANT BAYERISCHE MOTOREN WERKE AG’S
`MOTION TO STAY PENDING INTER PARTES REVIEWS (DKT. 64)
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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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`Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 2 of 7 PageID #: 888
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`I.
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`INTRODUCTION
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`NorthStar Systems LLC (“NorthStar” or “Plaintiff”) files this sur-reply in response to Defendant
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`Bayerische Motoren Werke AG’s (“BMW” or “Defendant”) reply (the “Reply) and in further opposition to
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`motion to stay pending five petitions for inter partes review (“IPR”) of the Patents-in-Suit (Dkt. 64) (the
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`“Motion”). The entirety of BMW’s reply argues that BMW filing the Motion at this juncture in the case
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`demonstrates diligence on its part under e-Watch. e-Watch v. Apple, Inc., No. 2:13-cv-1061-JRG-RSP,
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`2015 WL 12915668, at *3 (E.D. Tex. Mar. 25, 2015). The supposed “diligence standard” BMW attempts
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`to employ does not pertain to motions to stay made pre-institution of IPRs. Rather, as the case law
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`demonstrates, this Court has accorded diligence in filing a motion to stay when considering a renewed
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`motion to stay only after all IPRs are instituted. That is not the case here. BMW makes the Motion only
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`to demonstrate “diligence” and to preserve its right to renew the Motion if the IPRs are instituted. See
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`Motion at 9 (“Accordingly, BMW AG must file the present motion in accordance with this Court’s
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`practices.”).
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`For this reason alone, and because it is this Court’s universal practice to deny motions to stay pre-
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`institutions of IPRs, the Motion should be denied.
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`II.
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`ARGUMENT
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`BMW’s filing of the Motion at this stage does not warrant a stay under any precedent from
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`this Court. BMW in its Reply, as it did in the Motion, relies primarily on the Court’s decision in
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`e-Watch. BMW again misconstrues the ruling in e-Watch, which it asserts is the controlling
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`precedent. In e-watch, the Court denied Defendants HTC and HTC America, Inc.’s (collectively,
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`“HTC”) initial motion to stay pending the PTAB’s institution decisions on IPRs recently filed by
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`HTC. 2015 WL 12915668, at *1. The Court later granted HTC’s renewed motion to stay only after
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`the PTAB instituted IPR petitions involving “all the [] asserted claims” in the case against all
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`Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 3 of 7 PageID #: 889
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`parties. Id. To be clear, none of the IPRs have been instituted.1 For this reason, BMW’s reliance
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`on e-Watch as a basis for entering a stay at this stage is incorrect, and the Motion should be denied.2
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`BMW’s claim that because its motion to dismiss is pending, which contains similar
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`assertions to the motion dismiss filed by Volkswagen AG (“VW”), is now moot given the Court’s
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`Memorandum Opinion and Ordered entered on September 5, 2023. Dkt. 71. Therefore, the Court
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`need not consider the argument.
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`A.
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`A Stay Would Not Simply and Resolve Issues in the Case
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`The simplification of issues factor does not weigh in favor of a stay because none of the
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`pending IPRs have been instituted and may not be instituted well into the litigation. As stated in
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`the Opposition, BMW’s arguments to the contrary are premature and speculative. Therefore, it is
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`impossible to determine whether simplification of the issues will occur here.
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`BMW is incorrect regarding what occurred before the PTAB in the IPR for the ’297 Patent.
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`Moreover, the “simplification” to which BMW refers relates to issues that will occur during this
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`litigation, without resulting to IPRs. In the event none of the IPRs are instituted, any alleged
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`1 BMW’s reference to Solas Oled Ltd. v. Samsung Display Co., No. 2:19-cv-00152-JRG, 2020
`WL 4040716 (E.D. Tex. Jul. 17, 2020) is similarly unpersuasive. Like in eWatch, the defendant in
`Solas filed a motion to stay pre-institution of the relevant IPRs. See Solas, 2020 WL 4040716, at
`*1. The motion was denied. Id. Only after the IPRs were instituted did the Court grant the
`defendant’s renewed motion to stay. Id. at *3. The Court in Solas accorded the defendant’s
`diligence only as it related back to the initial motion to stay from the date of the renewed motion,
`rather than in considering the merits of the initial motion. Id. at *2. Again, the diligence analysis
`is only relevant after all the IPRs are instituted.
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` BMW’s reliance on Landmark Tech., LLC v. iRobot Corp., No. 6:13CV411 JDL, 2014 WL
`486836 (E.D. Tex. Jan. 24, 2014) is inapposite. In that case, the defendant sought “invalidity
`regarding the patents-in-suit under the Transitional Program for Covered Business Method Patents
`(“CBM Review”)”. Id. at *1. There, the Court noted that the transitional program provides a
`statutory stay provision under which a party may seek stay of a civil action alleging infringement
`of the CBM patent.” Id.; see also AIA § 18(b)(1). CBM Review is not at issue in this case and,
`therefore, the application of Landmark here is inappropriate.
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`2
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`Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 4 of 7 PageID #: 890
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`simplification will not occur. Thus, BMW’s arguments remain premature and speculative, and the
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`Motion should be denied.
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`B
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`This Case is not Well-Suited for a Stay at this Stage
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`BMW is incorrect that discovery has not begun in this case. The parties have already
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`exchanged Initial and Additional Disclosures, pursuant to the Docket Control Order. Dkts. 60, 61.
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`These disclosures serve as the foundation upon which all subsequent discovery is developed. To
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`state otherwise is disingenuous. Moreover, as noted in the Discovery Order, the additional
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`disclosure requirement “obviate[s] the need for requests for production.” Dkt. 58 at fn. 2. Further,
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`as BMW notes, it is already in the process of drafting and will soon serve its invalidity and subject
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`matter eligibility contentions. Reply at fn. 2. BMW emphasizes how its contentions are
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`“voluminous”, completely undercutting any argument that the parties have not undertaken
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`significant expense at this stage in the litigation. Id. Therefore, discovery is clearly underway,
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`and the parties have expended significant resources, which does not support the entry of a stay.3
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`C.
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`A Stay Will Unduly Prejudice NorthStar
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`The Reply does nothing to dispel the prejudices raised in the Opposition. As stated, and
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`demonstrated above, the parties have both incurred significant expense. Based on this alone, the
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`3 BMW’s fatal flaw in its application of the data from AIPLA, 2019 Report of the Economic
`Survey, is that it cuts off the expenditure analysis at the current stage of the litigation. However,
`as set forth in the Opposition, the parties will not have institution decisions on all the IPRs at issue
`until early 2024. Opp. at 6. Two of the IPRs have still yet to be accorded a filing date, so the
`parties will not know whether all of the IPRs are instituted until sometime in March 2024. See
`Bayerische Motoren Werke AG v. NorthStar Sys. LLC, IPR2023-01049 (PTAB); Bayerische
`Motoren Werke AG v. NorthStar Sys. LLC, IPR2023-01191 (PTAB); see also 35 U.S.C.§ 314(b)(1)-
`(2). Therefore, the analysis should more appropriately begin at the stage of “inclusive of discovery,
`motions, and claim construction”, which accounts for a more significant portion of the overall
`estimated litigation expense. The study also does not account for a party filing a declaratory
`judgment action, which BMW has done, despite also filing IPRs. BMW’s cost analysis further
`fails to account for the cost of IPRs, which is a significant omission since it filed six that are
`relevant here.
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`3
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`Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 5 of 7 PageID #: 891
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`Court should deny the request for the stay. Unifi Sci. Batteries, LLC v. Sony Mobile Commc’ns
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`AB, No. 6:12-cv-224-LED-JDL, 2014 WL 4494479, at *2 (E.D. Tex. Jan. 14, 2014) (“The Court
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`has an obligation ‘to secure the just, speedy, and inexpensive determination of every action.’ Fed.
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`R. Civ. P. 1.”); Voltstar Techs., Inc. v. Superior Commc’ns, Inc., No. 2:12-cv-00082-JRG, 2013 WL
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`4511290, at *2 (E.D. Tex. Aug. 22, 2013) (“[A] stay may unduly prejudice the patentee, who has
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`‘an interest in the timely enforcement of its patent right.’”). BMW’s claims regarding its status as
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`a non-practicing entity are also not dispositive of the Court’s analysis. Id. at *2 (finding undue
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`prejudice to patentee weighed against a stay where the patentee was a non-practicing entity).
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`NorthStar maintains this right, even if it does not practice the patents. BMW similarly fails to
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`address how a stay will affect its ability to license the Patents-in-Suit, or how a stay will affect the
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`memories of witnesses. The witnesses were already named in the Initial and Additional
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`Disclosures, and the age of the Patents-in-Suit is irrelevant to the likelihood of their memory
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`becoming stale on the issues in the case. Therefore, NorthStar will be unduly prejudiced by a stay
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`and the Motion should be denied.
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`III. CONCLUSION
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`For the foregoing reasons, Plaintiff respectfully request that the Court deny Defendant’s
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`motion to stay. (Dkt. 64).
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`Dated: September 8, 2023
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`Respectfully submitted,
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`/s/ Vincent J. Rubino, III
`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
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`4
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`Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 6 of 7 PageID #: 892
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`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, NY 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`John Andrew Rubino
`NY Bar No. 5020797
`Email: jarubino@rubinoip.com
`Michael Mondelli III
`NY Bar No. 5805114
`Email: mmondelli@rubinoip.com
`RUBINO IP
`51 J.F.K. Parkway
`Short Hills, NJ, 07078
`Telephone: (201) 341-9445
`Facsimile: (973) 535-0921
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`Justin Kurt Truelove
`Texas Bar No. 24013653
`Email: kurt@truelovelawfirm.com
`TRUELOVE LAW FIRM, PLLC
`100 West Houston
`Marshall, Texas 75670
`Telephone: (903) 938-8321
`Facsimile: (903) 215-8510
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`ATTORNEYS FOR PLAINTIFF,
`NORTHSTAR SYSTEMS LLC
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`5
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`Case 2:22-cv-00486-JRG Document 72 Filed 09/08/23 Page 7 of 7 PageID #: 893
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on September 8, 2023, 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/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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