Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 1 of 12 PageID #: 256
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`SLYDE ANALYTICS LLC,
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`Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`v.
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`Defendants.
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`Case No. 2:23-cv-00083-RWS-RSP
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`JURY TRIAL DEMANDED
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`SAMSUNG ELECTRONICS CO. LTD. AND SAMSUNG ELECTRONICS AMERICA,
`INC.’S MOTION TO STAY UNTIL CONCLUSION OF PTAB PROCEEDINGS
`RELATING TO THE PENDING PETITIONS FOR INTER PARTES REVIEW
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 2 of 12 PageID #: 257
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`TABLE OF CONTENTS
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`I. 
`INTRODUCTION ................................................................................................................... 1 
`BACKGROUND ................................................................................................................. 1 
`II. 
`III.  ARGUMENT ....................................................................................................................... 2 
`A. 
`Slyde Will Not Suffer Undue Prejudice. .......................................................................... 2 
`B. 
`The Case Is In Its Earliest Stages. .................................................................................... 4 
`C. 
`The IPRs are Highly Likely To Simplify Or Eliminate Issues, Streamline the Litigation,
`and Reduce the Burden on the Court and the Parties. ...................................................... 5 
`IV.  CONCLUSION .................................................................................................................... 8 
`CERTIFICATE OF CONFERENCE ............................................................................................ 10 
`CERTIFICATE OF SERVICE ...................................................................................................... 10 
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 3 of 12 PageID #: 258
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`I.
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`INTRODUCTION
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`Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
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`(collectively, “Samsung”) respectfully move to stay this case until conclusion of the Patent Trial
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`and Appeal Board (“PTAB”) proceedings relating to the pending petitions for inter partes reviews
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`(“IPR”) of the patents-in-suit. Samsung has filed IPR petitions challenging every claim of every
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`asserted patent and now moves for a stay to conserve the Court’s and parties’ resources. Neither
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`the Court nor Samsung should expend resources on motions, fact and expert discovery, claim
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`construction, summary judgment, pre-trial, and trial, when the PTAB is poised to expeditiously
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`invalidate the asserted patents.
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`Courts typically find circumstances similar to those presented here to favor a stay. First, a
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`stay will not unduly prejudice Slyde Analytics LLC (“Slyde”), because monetary damages would
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`adequately compensate Slyde for any alleged infringement. Second, this case is in its earliest
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`stages. In fact, Samsung filed IPR petitions on each of the four asserted patents before serving its
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`invalidity contention or any claim construction exchanges in this case. Third, the IPRs are likely
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`to simplify the issues in this case, if not dispense with it entirely, because Samsung has challenged
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`every claim of every asserted patent. A stay pending the IPRs’ resolution is, therefore, warranted.
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`II. BACKGROUND
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`Slyde filed its Complaint on February 28, 2023, alleging that Samsung-branded
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`wristwatches with a digital display infringe four patents. Dkt. 1. Between October 9, 2023 and
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`November 2, 2023, Samsung filed IPR petitions challenging every claim of each of the four
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`patents-in-suit, collectively challenging the validity of 68 claims:
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`Patent-in-Suit
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`IPR No.
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`Date Filed
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`8,588,033
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`IPR2024-00006
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`October 16, 2023
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`1
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`9,651,922
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`9,804,678
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`10,198,085
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`IPR2024-00002
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`IPR2024-00040
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`IPR2024-00041
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`October 9, 2023
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`November 2, 2023
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`November 2, 2023
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`III. ARGUMENT
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`“[The] district court has the inherent power to control its own docket, including the power
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`to stay proceedings.” Vill. Green Techs., LLC v. Samsung Elecs. Co., Ltd., No. 2:22-CV-00099-
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`JRG, 2023 WL 416419, at *1 (E.D. Tex. Jan. 25, 2023) (quoting Clinton v. Jones, 520 U.S. 681,
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`706 (1997)). In doing so, the court “must weigh competing interests and maintain an even
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`balance.” Id. (quoting Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936)). When deciding
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`whether to stay a case pending IPR proceedings, courts in this District consider “(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.” Id. (quoting
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`NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex.
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`Mar. 11, 2015)). “Based on th[ese] factors, courts determine whether the benefits of a stay
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`outweigh the inherent costs of postponing resolution of the litigation.” Id. Each of the three factors
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`weighs in favor of granting a stay in this case.
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`Slyde Will Not Suffer Undue Prejudice.
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`A.
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`“[W]hether the patentee will be unduly prejudiced by a stay in the district court proceedings
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`. . . focuses on the patentee’s need for an expeditious resolution of its claim.” VirtualAgility Inc.
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`v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014) (emphasis in original). Here, Slyde
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`would not suffer undue prejudice from a stay because it does not compete with Samsung and can
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`2
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`receive monetary relief sufficient to compensate for the alleged injuries. Slyde does not appear to
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`have any business operations aside from maintaining and asserting a patent portfolio. See NFC
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`Tech., 2015 WL 1069111, at *3 (finding that “generalized claim of injury is entitled to little
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`weight” where plaintiff “does not compete with [defendant] and [] monetary relief will be
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`sufficient to compensate it for any injury to its patent rights”); Uniloc 2017 LLC v. LG Elecs.
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`U.S.A., Inc., No. 3:18-CV-3071-N, 2020 WL 374545, at *1 (N.D. Tex. Jan. 23, 2020) (“While
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`‘competition between parties can weigh in favor of finding undue prejudice,’ Uniloc and
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`Defendants are not competitors.”) (quoting VirtualAgility, 759 F.3d at 1318).
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`Moreover, in the event that Slyde is ultimately found to be entitled to some relief, it can be
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`adequately compensated through monetary damages. Notably, a “stay will not diminish the
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`monetary damages to which [Slyde] will be entitled if it succeeds in its infringement suit—it only
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`delays realization of those damages.” VirtualAgility, 759 F.3d at 1318–19; see also NFC Tech.,
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`2015 WL 1069111, at *2 (explaining that “delay in the vindication of patent rights” is “present in
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`every case in which a patentee resists a stay, and it is therefore not sufficient, standing alone, to
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`defeat a stay motion”).
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`On the other hand, Samsung faces undue prejudice if a stay is not granted. Without a stay,
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`Samsung will incur significant litigation expenses defending itself against allegations based on the
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`four patents-in-suit when those allegations may be mooted or materially altered both by the
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`outcome of the IPRs and representations Slyde may make during their pendency. Especially at
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`this early stage of the litigation, a stay will benefit both parties by allowing them to take advantage
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`of the IPR process and its creation of “a more efficient and streamlined patent system [to] improve
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`patent quality and limit unnecessary and counterproductive litigation costs.” U.S. Patent and
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`Trademark Office, Changes to Implement Inter Partes Review Proceedings, Post-Grant
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`3
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`Proceedings, and Transitional Program for Covered Business Method Patents, 77 FR 48680-01.
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`The Case Is In Its Earliest Stages.
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`B.
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`“Staying a case at an early juncture can advance judicial efficiency and maximize the
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`likelihood that neither the court nor the parties expend their assets addressing invalid claims.”
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`Landmark Tech., LLC v. iRobot Corp., No. 6:13-cv-411-JDL, 2014 WL 486836, at *3 (E.D. Tex.
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`Jan. 24, 2014) (internal quotation marks and brackets omitted); see also Chart Trading Dev., LLC
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`v. Tradestation Grp., Inc., No. 6:15-CV-1136-JDL, 2016 WL 1246579, at *4 (E.D. Tex. Mar. 29,
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`2016) (same). Slyde filed its Complaint on February 28, 2023, asserting four patents. Samsung
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`has filed its Answer, which asserts affirmative defenses and counterclaims to Slyde’s Complaint.
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`And as of the date of this motion, the case remains in its infancy. Samsung has just recently
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`received Slyde’s initial interrogatories; there has been no other discovery, including no
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`depositions. The parties’ initial claim construction exchanges are months away. At this point,
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`“the bulk of the expenses that the parties would incur in pretrial work and trial preparation are still
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`in the future.” NFC Tech., 2015 WL 1069111, at *3. Because “the most burdensome parts of the
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`case . . . all lie in the future,” CyWee Grp. Ltd. v. Samsung Elecs. Co., Case No. 2:17-cv-00140-
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`WCB-RSP, 2019 WL 11023976, at *6 (E.D. Tex. Feb. 14, 2019), the requested stay would
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`conserve a significant amount of judicial and party resources—even more so than in other cases
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`where stays have been granted. See, e.g., Smartflash LLC v. Apple Inc., 621 F. App’x 995, 1005
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`(Fed. Cir. 2015) (“Despite the substantial time and effort already spent in this case, the most
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`burdensome task [i.e., the trial] is yet to come. A determination from the PTAB that all the asserted
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`claims are patent ineligible will spare the parties and the district court the expense of any further
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`litigation, including a trial.”); Vill. Green Techs., 2023 WL 416419, at *3 (finding that a case was
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`not “in its ‘advanced stages’” where initial discovery had been exchanged, but the trial setting was
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 7 of 12 PageID #: 262
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`over 14 months away and the claim construction hearing was about seven months away).
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`In particular, a stay at this stage will save judicial resources by avoiding any need for the
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`Court to revisit claim-construction or other decisions in view of any binding arguments that Slyde
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`may make before the PTAB.1 See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1364 (Fed.
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`Cir. 2017) (“[S]tatements made by a patent owner during an IPR proceeding, whether before or
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`after an institution decision, can be relied upon to support a finding of prosecution disclaimer.”);
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`Huawei Techs. Co. v. T-Mobile US, Inc., No. 2:16-cv-00052-JRG-RSP, 2017 WL 4385567, at *3–
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`5 (E.D. Tex. Sep. 9, 2017), report and recommendation adopted, No. 2:16-cv-00052-JRG-RSP,
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`2017 WL 4310161 (E.D. Tex. Sep. 28, 2017) (stating that “[r]egardless of whether an examiner or
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`panel agreed with the patentee’s statement, the statement itself may result in disclaimer because it
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`constitutes a representation to the public about the scope of the patent” and finding prosecution
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`disclaimer based on statements made in a patent owner’s Preliminary Response). A stay will also
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`allow Slyde and Samsung to avoid incurring substantial expenses litigating issues that may well
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`be mooted, streamlined, or at a minimum further defined via the PTAB proceedings. See, e.g.,
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`Versata Software, Inc. v. Callidus Software, Inc., 771 F.3d 1368, 1374 (Fed. Cir. 2014) (noting
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`courts should be “mindful of the burden on the parties and the court in completing both fact and
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`expert discovery, resolving summary judgment motions, completing the Markman process, and
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`preparing for trial,” and finding such considerations strongly favored a stay), opinion vacated on
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`other grounds by 780 F.3d 1134 (Fed. Cir. 2015).
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`The IPRs are Highly Likely To Simplify Or Eliminate Issues, Streamline the
`Litigation, and Reduce the Burden on the Court and the Parties.
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`C.
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`1 For these IPR’s, Slyde will likely file its Patent Owner Preliminary Responses in January-
`February 2024. If the IPR’s are instituted, it will file its Patent Owner Responses in July-August
`2024 and its Patent Owner Sur-Replies in November-December 2024.
`5
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`“[T]he most important factor bearing on whether to grant a stay in this case is the prospect
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`that the inter partes review proceeding will result in simplification of the issues before the Court.”
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`Vill. Green Techs., 2023 WL 416419, at *1 (quoting NFC Tech., 2015 WL 1069111, at *4). “A
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`stay is particularly justified when the outcome of a PTO proceeding is likely to assist the court in
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`determining patent validity or eliminate the need to try infringement issues.” Commc’n Techs.,
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`Inc. v. Samsung Elecs. Am., Inc., No. 2:21-CV-00444-JRG, 2023 WL 1478447, at *1 (E.D. Tex.
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`Feb. 2, 2023) (internal quotation marks omitted). Moreover, as the Federal Circuit and this Court
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`have both observed, an important “auxiliary function [of the proceeding] is to free the court from
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`any need to consider prior art without the benefit of the [PTAB]’s initial consideration.” Norman
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`IP Holdings, LLC v. TP-Link Techs., Co., No. 6:13-cv-384-JDL, 2014 WL 5035718, at *2 (E.D.
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`Tex. Oct. 8, 2014) (quoting In re Etter, 756 F.2d 852, 857 (Fed. Cir. 1985)).
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`Because Samsung has filed IPR petitions challenging every claim of every one of the
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`patents-in-suit, all of which Slyde has asserted, the IPR proceedings are likely to simplify the issues
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`in this case and potentially resolve it altogether. Statistically, the PTAB institutes most petitions.
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`The Patent Office’s most recent end-of-year trial statistics indicate that the PTAB had an overall
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`institution rate (on a per patent basis) of 70% in Fiscal Year 2022. Ex. A, PTAB Statistics, FY
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`2022 Roundup at 7. And instituted IPRs typically lead to claim cancellation. During the same
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`time period, FY 2022, the Board issued 464 final written decisions. Id. at 11. In 305 of them
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`(66%), all claims were cancelled, while in 85 (another 18%) at least some claims were canceled.
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`Id. Accordingly, recent statistics indicate that 84% of the time, at least some claims in an IPR will
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`be cancelled. Id. at 11. And if the Final Written Decision affirms claims, the IPRs will simplify
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`this case through estoppel. CyWee Group Ltd. v. Samsung Elecs. Co. Ltd., No. 2:17-CV-00140-
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`WCB-RSP, 2019 WL 11023976, at *8 (E.D. Tex. Feb. 14, 2019) (explaining that the “likelihood”
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 9 of 12 PageID #: 264
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`of “benefits flowing from inter partes review is high,” including because “the defendant will be
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`estopped from challenging the validity of the claims on any ground that was, or could reasonably
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`have been, asserted in the inter partes proceeding” for any claims whose validity is confirmed in a
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`Final Written Decision).
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`But, even before the PTAB issues its institution decisions, the IPR proceedings may
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`simplify this case because Slyde’s Preliminary Responses are evidence for issues such as claim
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`construction. Aylus Networks, 856 F.3d at 1359–60; see also Corel Software, LLC v. Microsoft
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`Corp., No. 2:15-cv-528-JNP-PMW, 2016 WL 4444747, at *2 (D. Utah Aug. 23, 2016) (“Because
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`it is possible, even likely, that the PTO will proceed on at least one of [Defendant’s] IPR petitions,
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`this factor weighs in favor of a stay. Proceeding with claim construction without the benefit of the
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`additional intrinsic record developed during IPR could complicate this case by making it necessary
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`to reconsider certain claim construction issues.”). This Court previously found statements made
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`in a patent owner’s Preliminary Response dispositive in granting summary judgment of non-
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`infringement on the basis of prosecution disclaimer. See Huawei, 2017 WL 4385567, at *3–5. An
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`immediate stay would ensure that, should this case resume at a later date, the Court and the parties
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`will have a complete record upon which to address claim construction and any other remaining
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`disputed issues.
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`Even if the PTAB invalidates only some of the asserted patents or claims, the IPRs still
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`will have simplified the case while adding information to the record in ways that are likely to
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`inform the remaining issues. And even if some petitions are not instituted, judicial economy still
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`counsels that the case be stayed because those that are instituted will likely simplify the issues.
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`See Versata Software, 771 F.3d at 1371–72 (“Stays can be warranted even when a [PTO]
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`proceeding does not address all asserted patents, claims, or invalidity defenses.”); NFC Tech., 2015
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`7
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 10 of 12 PageID #: 265
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`WL 1069111, at *7 (“[A]ny disposition by the PTAB is likely to simplify the proceedings before
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`this Court . . . .”); Uniloc USA Inc. v. Google Inc., No. 2:17-cv-00231-JRG, Dkt. 47 (E.D. Tex.
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`Oct. 3, 2017) (finding, in granting a stay where IPRs for two out of four patents-in-suit asserted in
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`related actions were instituted, that there was “a significant likelihood that the outcome of the IPR
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`proceedings will streamline the scope and resolution of these cases”). Given the potential
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`scenarios regarding the IPR petitions, and their most likely outcomes, this “most important factor”
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`plainly favors a stay. Vill. Green Techs., 2023 WL 416419, at *1.
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`IV. CONCLUSION
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`Because the relevant factors all weigh in favor of a stay, Samsung respectfully requests
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`that the Court stay this case until conclusion of the PTAB proceedings relating to the pending
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`petitions requesting IPR of the patents-in-suit. If the Court denies this motion because the PTAB’s
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`institution decisions are pending, Samsung respectfully asks the Court to deny the motion without
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`prejudice, so it may renew the motion after the IPRs are instituted.
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`8
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 11 of 12 PageID #: 266
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`Dated: November 10, 2023
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`Respectfully submitted,
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`/s/ Ryan Yagura
`Ryan Yagura (TX #24075933)
`ryagura@omm.com
`Nicholas Whilt (admitted pro hac vice)
`nwhilt@omm.com
`Grace McFee (admitted pro hac vice)
`gmcfee@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
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`Timothy Durst (TX #786924)
`tdurst@omm.com
`Jeffery Derek Baxter (TX #24006816)
`jbaxter@omm.com
`O’MELVENY & MYERS LLP
`2501 North Harwood Street, Suite 1700
`Dallas, TX 75201
`Telephone: (972) 360-1900
`Facsimile: (972) 360-1901
`jbaxter@omm.com
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`Brad Berg (admitted pro hac vice)
`bmberg@omm.com
`610 Newport Center Drive, 17 Floor
`O’MELVENY & MYERS LLP
`Newport Beach, CA 92660
`Telephone: (949) 823-6900
`Facsimile: (949) 823-66994
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`303 South Washington Avenue
`GILLIAM & SMITH, LLP
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendants Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
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`9
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`Case 2:23-cv-00083-RWS-RSP Document 42 Filed 11/10/23 Page 12 of 12 PageID #: 267
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`CERTIFICATE OF CONFERENCE
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`The undersigned counsel hereby certifies that counsel for Samsung, and counsel for Slyde
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`Analytics, complied with the meet and confer requirement specified in E.D. Tex. Local Rule
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`CV-7(h)–(i) on November 8, 2023. No agreement was reached and discussions ended in an
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`impasse, leaving an open issue for the Court to resolve. This motion is opposed.
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`/s/ Ryan K. Yagura
`Ryan K. Yagura
`O’Melveny & Myers LLP
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on November 10, 2023, all counsel of record who have appeared in this case are being served
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`with a copy of the foregoing via the Court’s CM/ECF system.
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`/s/ Ryan K. Yagura
`Ryan K. Yagura
`O’Melveny & Myers LLP
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`Dated: November 10, 2023
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