Case 2:22-cv-00486-JRG Document 92 Filed 02/28/24 Page 1 of 9 PageID #: 1526
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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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`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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`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 OPPOSITION
`TO DEFENDANT BAYERISCHE MOTOREN WERKE AG’S SECOND MOTION
`TO STAY PENDING INTER PARTES REVIEWS (DKT. 87)
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`Case 2:22-cv-00486-JRG Document 92 Filed 02/28/24 Page 2 of 9 PageID #: 1527
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`TABLE OF CONTENTS
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`I.
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`II.
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`Page(s)
`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`The Facts of the Case Do Not Warrant a Stay ........................................................ 1
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`Simplification of the Issues is Speculative ............................................................. 3
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`The Stage of the Litigation ..................................................................................... 4
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`NorthStar Will be Prejudiced by a Stay .................................................................. 4
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`III.
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`CONCLUSION ................................................................................................................... 5
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`i
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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
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`Defendant Bayerische Motoren Werke AG’s (“BMW” or “Defendant”) Reply and in further
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`opposition to the Second Motion (Dkt. 87). On Reply, BMW has done nothing to advance its
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`argument that the Court should enter a stay in advance of the PTAB’s pending institution decision
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`on the Non-Instituted Patent, which is expected by or on March 22, 2024. As is set forth in
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`NorthStar’s opposition papers, as well as below, the Second Motion should be denied.
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`II.
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`ARGUMENT
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`A.
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`The Facts of the Case Do Not Warrant a Stay
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`The facts and procedural history of this case do not render it unique such that the Court
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`should ignore its practice of denying stays before institution of all claims at issue. The case law
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`cited by BMW in support of its assertion that this case is “unique,” thus requiring a stay, is
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`inapposite and factually distinct. In Uniloc USA Inc. v. Google Inc., No. 2:17-CV-00231, Dkt. 47
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`(E.D. Tex. Oct. 3, 2017) (Gilstrap, J.), this Court granted Google’s motion to stay, in part, because
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`there were six (6) consolidated cases, all against Google Inc. Id. at 2. Google’s motion to stay
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`was also unopposed in relation to three (3) of the consolidated matters. Id. at 1. In contrast, here,
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`there is only one case at issue.
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`Similarly, in Onpoint Sys., LLC v. Protect Animals With Satellites, LLC, No. 4:20-CV-657,
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`2022 WL 2704166 (E.D. Tex. July 12, 2022), the underlying facts are distinct where the Court
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`granted the defendant’s motion to stay, in part, because the one (1) patent already instituted for
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`inter partes review was “closely related[]” to two (2) other asserted patents, both of which were
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`before the PTAB pending institution decisions. Moreover, and more importantly, the court there
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`noted “that it appears that neither party is genuinely interested in continuing to litigate this matter
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`in this Court while the PTAB’s IPR is ongoing []” because the plaintiff/patent owner offered the
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`alternative solution that “both parties dismiss their claims and counterclaims without prejudice to
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`refil[e], but no such existing claim shall be refiled until after the IPRs are complete (including
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`appeals)”. Id. at *3 (internal quotations omitted). Again, the case here is different. The Non-
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`Instituted Patent is not closely related to the Instituted Patents, and NorthStar maintains that the
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`litigation should continue despite the pending IPRs. The application of Onpoint Sys., LLC is,
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`therefore, inappropriate.
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`Reliance on the remainder of the case law cited by BMW would also be inappropriate. For
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`example, in Stingray Music USA, Inc. v. Music Choice, No. 2:16-CV-586-JRG-RSP, 2017 WL
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`9885167 (E.D. Tex. Dec. 12, 2017), all claims at issue in the pending IPRs were instituted, apart
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`from two claims that were added by the plaintiff in response to defendant’s petitions for inter
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`partes review. Id. at *1, n.1. Importantly, these two claims were part of a patent (the ’245 Patent)
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`for which the PTAB had already instituted inter partes review. Id. In Chart Trading Dev., LLC v.
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`Tradestation Grp., Inc., No. 6:15-cv-1136-JDL, 2016 WL 1246579 (E.D. Tex. Mar. 29, 2016), the
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`action involved four (4) separately filed lawsuits against thirty-two (32) defendants, all of which
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`were later consolidated in the action that was ultimately stayed. Id. at 1. In CyWee Grp. Ltd. v.
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`Samsung Elecs. Co., No. 2:17-CV-140-WCB-RSP, 2019 WL 11023976 (E.D. Tex. Feb. 14, 2019),
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`the stayed case was one of eight (8) similar cases filed by the plaintiff in five (5) different districts.
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`Id. at * 1. And, significantly, in Netlist, Inc. v. Micron Tech., Inc., No. 2:22-CV-00203-JRG-RSP,
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`Dkt. 493, (E.D. Tex. Feb. 10, 2024) (Gilstrap, J.), this Court granted a stay after four (4) of the six
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`(6) patents were invalidated by the PTAB, and where the remaining two (2) patents were instituted
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`for review by the PTAB and the final decisions are expected by April 12, 2024. Id. at 1. Each case
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`cited by BMW is factually distinct from the case here, and therefore, inapposite. Accordingly,
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`BMW has provided no authority to demonstrate this is a “unique” case requiring the Court to
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`Case 2:22-cv-00486-JRG Document 92 Filed 02/28/24 Page 5 of 9 PageID #: 1530
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`deviate from its practice of denying stays before the institution of all claims, and the Second
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`Motion should be denied.
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`B.
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`Simplification of the Issues is Speculative
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`BMW continues under the false assumption that because review of the Instituted Patents
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`was granted by the PTAB the issues will “inevitably” be simplified. This is not the case. There is
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`a very real possibility that the PTAB finds many (or even all) of the claims before it to be valid.
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`In that instance, no issues will have been simplified. BMW, however, views this as an
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`impossibility, which is not the case.
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`BMW is incorrect that the claim construction will be simplified. The PTAB and a District
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`Court are not required to accept or adopt the constructions of the PTAB or vice-a-versa. It is,
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`therefore, entirely possible, and permissible, for this Court to adopt a different construction of any
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`claims at issue, including those already discussed by the PTAB in its institution decisions. And,
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`as stated in NorthStar’s response papers, NorthStar’s proposed construction of certain terms is of
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`record before the PTAB, and claim construction will not be affected going forward.
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`To the extent BMW argues that issues of invalidity and non-infringement will be
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`simplified, these arguments are premised on the assumption from BMW that all or any of the
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`claims at issue in this case will be invalidated by the PTAB, which is speculative.
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`BMW’s argument that a stay will benefit the parties is belied by BMW’s actions in filing
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`the Second Motion. Rather than wait until March 22, 2024 – less than a month from the filing of
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`this sur-reply, BMW is forcing the parties to unnecessarily expend resources related to the instant
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`motion. The only major deadline expected before the PTAB’s institution decision is the completion
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`of claim construction discovery. See Dkt. 91. If anything, the parties’ efforts in completing any
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`necessary claim construction discovery will aid the parties in proceedings before the PTAB.
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`3
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`Accordingly, the simplification of issues factor remains, as it has always been, speculative,
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`and the Second Motion should be denied.
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`C.
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`The Stage of the Litigation
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`The stage of the litigation also favors denying the Motion where it would be more
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`appropriate to await the PTAB’s institution decision on the Non-Instituted Patent. This sur-reply
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`will be filed on February 28, 2024. The institution decision on the Non-Instituted Patent is
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`expected no later than March 22, 2024. In the interim twenty-three (23) days (or less), the parties
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`need only comply with P.R. 4-3 and complete claim construction discovery. See Dkt. 91. Neither
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`of these deadlines represent significant expenditures and, as stated above, claim construction
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`discovery, to the extent necessary, may only benefit the parties before the PTAB.
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`Accordingly, this case is well situated for the parties to continue litigating until the PTAB
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`renders the final institution decision, and the Second Motion should be denied.
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`D.
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`NorthStar Will be Prejudiced by a Stay
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`BMW’s nonsensical arguments regarding prejudice do not warrant granting a stay. BMW
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`asserts that it is NorthStar’s own fault for opposing a motion seeking relief to which it does not
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`believe BMW is rightfully entitled. However, BMW has caused NorthStar to unnecessarily expend
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`resources by opposing this motion, rather than awaiting the PTAB’s final institution decision. As
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`BMW concedes, the parties will know in less than a month whether the final petitions for inter
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`partes review are granted. Dkt. 89 at 4-5. BMW never claims that complying with P.R. 4-3 and
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`completing claim construction discovery are a costly undertaking. In fact, it claims that the
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`primary litigation costs lie ahead. Id. Nonetheless, NorthStar disagrees that any stay is necessary
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`at this stage, particularly where any necessary claim construction may further assist the parties.
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`From this, it is clear that NorthStar will be prejudiced by a premature and unnecessary stay of the
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`litigation when BMW explicitly concedes that waiting will be of inconsequential cost – at least to
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`BMW.
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`Accordingly, 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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`Second Motion to stay. (Dkt. 87).
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`Dated: February 28, 2024
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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
`FABRICANT LLP
`411 Theodore Fremd Avenue
`Suite 206 South
`Rye, NY 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`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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`5
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`Case 2:22-cv-00486-JRG Document 92 Filed 02/28/24 Page 8 of 9 PageID #: 1533
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`Justin Kurt Truelove
`State 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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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on February 28, 2024, 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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