Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 1 of 16 PageID #: 9312
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`v.
`
`APPLE INC.,
`
`Plaintiff
`
`Defendant.
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`APPLE INC.’S MOTION TO STAY PENDING DETERMINATION OF
`INTER PARTES REVIEW OF THE PATENTS-IN-SUIT
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`

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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 2 of 16 PageID #: 9313
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. 1
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`FACTUAL BACKGROUND ............................................................................................ 2
`
`III.
`
`ARGUMENT ..................................................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Maxell Will Suffer No Undue Prejudice Or Tactical Disadvantage ...................... 3
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`The Proceedings Are Not Advanced And Discovery Is Not Yet Complete .......... 4
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`The Stay Will Likely Simplify This Case .............................................................. 5
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`The Court Should Grant The Requested Stay Now ............................................... 9
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`IV.
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`CONCLUSION ................................................................................................................ 10
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`i
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 3 of 16 PageID #: 9314
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`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`
`454 Life Scis. Corp. v. Ion Torrent Sys., Inc.,
`No. 15-cv-595-LPS, 2016 WL 6594083 (D. Del. Nov. 7, 2016) ............................................... 8
`
`Acoustic Tech., Inc. v. Silver Springs Networks, Inc.,
`No. 17-CV-02176-SK, 2017 WL 6001615 (N.D. Cal. July 25, 2017) ..................................... 10
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017) .................................................................................................. 7
`
`Capriola Corp. v. LaRose Indus., LLC,
`No. 8:12-cv-2346-T-23TBM, 2013 WL 1868344 (M.D. Fla. Mar. 11, 2013) ........................... 6
`
`Cellular Commc’ns Equip., LLC v. Samsung Elecs. Co.,
`No. 6:14-CV-759, 2015 WL 11143485 (E.D. Tex. Dec. 16, 2015) ......................................... 10
`
`Destination Maternity Corp. v. Target Corp.,
`12 F. Supp. 3d 762 (E.D. Penn. 2014) ........................................................................................ 6
`
`Elm 3DS Innovations LLC v. Micron Technology Inc. et al.,
`No. 14-01431 (D. Del. July 11, 2016) ...................................................................................... 10
`
`Ever Win Int’l Corp. v. Radioshack Corp.,
`902 F. Supp. 2d 503 (D. Del. 2012) ............................................................................................ 7
`
`E-Watch, Inc. v. Lorex Canada, Inc.,
`No. CIV.A. H-12-3314, 2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) .................................. 10
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013) .................................................................................................. 7
`
`Goodman v. Samsung Elecs. Am., Inc.,
`No. 17-CV-5539 (JGK), 2017 WL 5636286 (S.D.N.Y. Nov. 22, 2017) .................................... 9
`
`Interface, Inc. v. Tandus Flooring, Inc.,
`No. 4:13-cv-46-WSD, 2013 WL 5945177 (N.D. Ga. Nov. 5, 2013) .......................................... 5
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) .................................................................................................................... 3
`
`NFC Techs. LLC v. HTC Am., Inc.,
`No. 2:13-CV-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ................................... 3, 4, 8
`
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ................................................................................................................ 8
`
`ii
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 4 of 16 PageID #: 9315
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`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
`
`SCA Hygiene Prod. Aktiebolag v. Cascades Canada, ULC,
`No. 17-CV-282-WMC, 2017 WL 4484495 (W.D. Wis. Oct. 6, 2017) ...................................... 9
`
`SCA Hygiene Prod. Aktiebolag v. Tarzana Enterprises, LLC,
`No. CV17-04395-AB(JPRx), 2017 WL 5952166 (C.D. Cal. Sept. 27, 2017).......................... 10
`
`Select Comfort Corp. v. Tempur Sealy Int’l,
`No. 14-245 (JNE/JSM), 2014 U.S. Dist. LEXIS 183450 (D. Minn. Oct. 10, 2014) .................. 7
`
`Semiconductor Energy Lab. Co. v. Chimei Innolux Corp.,
`No. SACV 12-21, 2012 WL 7170593 (C.D. Cal. Dec. 19, 2012) .............................................. 4
`
`Software Rights Archive, LLC v. Facebook, Inc.,
`No. 12–3970, 2013 WL 5225522 (N.D. Cal. Sept. 17, 2013) .................................................... 5
`
`St. Martin Investments, Inc. v. Bandit Indus., Inc.,
`No. 1:17-CV-472, 2017 WL 6816506 (W.D. Mich. Aug. 30, 2017) ....................................... 10
`
`Target Therapeutics, Inc. v. SciMed Life Sys., Inc.,
`No. 94-20775, 1995 WL 20470 (N.D. Cal. Jan. 13, 1995) ......................................................... 8
`
`The Procter & Gamble Co. v. Kraft Foods Global, Inc.,
`549 F.3d 842 (Fed. Cir. 2008) .................................................................................................... 3
`
`TierraVision, Inc. v. Google, Inc.,
`No. 11-cv-2170, 2012 WL 559993 (S.D. Cal. Feb. 21, 2012) .................................................... 4
`
`Vanair Mfg., Inc. v. VMAC Glob. Tech. Inc.,
`No. 2:17-CV-236-JVB-JEM, 2018 WL 1566815 (N.D. Ind. Mar. 30, 2018) ............................ 9
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014) .................................................................................................. 4
`
`Wonderland Nurserygoods Co. v. Baby Trend, Inc.,
`No. EDCV 14-1153-VAP(SPx), 2015 U.S. Dist. LEXIS 53053 (C.D. Cal. Apr. 20, 2015) ...... 6
`
`Statutes
`
`35 U.S.C. § 318 ............................................................................................................................... 7
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`iii
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 5 of 16 PageID #: 9316
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`
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`I.
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`INTRODUCTION
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`Apple has petitioned for inter partes review (“IPR”) of all asserted claims of the ten
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`Patents-in-Suit.1 Apple now respectfully requests, in the interest of judicial efficiency, that this
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`Court stay further proceedings pending the Patent Trial and Appeal Board’s (“PTAB’s”)
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`resolution of Apple’s IPR petitions. Apple filed its petitions before the statutory deadline to do
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`so, and each factor considered for a stay—potential undue prejudice to the non-moving party,
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`stage of the proceedings, and simplification of issues—strongly favors granting a stay.
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`Plaintiff is not prejudiced by a stay: The Plaintiff, Maxell, is essentially a patent
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`assertion entity that does not compete with Apple in the market and has admitted that it does not
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`practice any of the Patents-in-Suit. Money damages will adequately compensate it for any
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`alleged harm and it will suffer no prejudice at all or tactical disadvantage from a stay.
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`The proceedings are not at an advanced stage and discovery is not yet complete: Fact
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`discovery is ongoing. Maxell continues to request that Apple produce new documents it has
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`never before requested, most of the fact depositions are not yet completed, expert discovery has
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`yet to begin, and dispositive motions are months away. And trial is not until late October.
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`A stay will simplify the issues: This case involves ten Patents-in-Suit, hundreds of
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`accused products, and a plethora of accused and unrelated features, such as navigation, digital
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`photography, cellular communication, mobile device notification, video conferencing, and
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`wireless communications. To address the huge scope of this case, the parties have collectively
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`identified more than a dozen experts. A stay pending resolution of Apple’s IPRs has a high
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`
`1 The ten Patents-in-Suit are U.S. Patent Nos. 6,748,317; 6,580,999; 8,339,493; 7,116,438;
`6,408,193; 10,084,991; 6,928,306; 6,329,794; 10,212,586; and 6,430,498 (collectively, the
`“Patents-in-Suit”).
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`1
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`probability of greatly simplifying—if not completely eliminating—the myriad issues that a jury
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`will need to consider.
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`Because all three factors weigh strongly in favor of a stay, Apple respectfully requests
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`that the Court stay this action.
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`II.
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`FACTUAL BACKGROUND
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`Maxell filed its initial Complaint on March 15, 2019, and its First Amended Complaint
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`on October 23, 2019. D.I. 1, D.I. 111. Maxell accuses hundreds of Apple’s products of
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`infringing the ten Patents-in-Suit. See D. I. 111, ¶¶ 26, 40, 55, 68, 85, 98, 111, 128, 141, 156. In
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`its June 12, 2019 Infringement Contentions, Maxell asserted a total of 90 claims. Declaration of
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`Luann Simmons (“Simmons Decl.”), ¶ 15. Maxell served supplemental infringement
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`contentions on March 13, 2020, that include over 3,700 pages of claim charts. Id., ¶ 16.
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`Maxell reduced the number of asserted claims from 90 to 40 in its November 6, 2019
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`Preliminary Election of Asserted Claims. Id., ¶¶ 15, 17. Within four and a half months of
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`Maxell narrowing its claims to 40, Apple filed ten IPR petitions challenging all 40 of those
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`claims. Apple filed petitions for the ’438, ’991, ’794, and ’586 patents on December 19, 2019,
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`for the ’193 and ’306 patents on December 20, 2019, for the ’317, ’999, and ’498 patents on
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`January 13, 2020, and for the ’493 Patent on March 17, 2020. Id., ¶¶ 5-14.
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`Institution Decisions for all but the last-filed petition are due in June, July, and August
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`2020. See id., ¶¶ 5-13; 35 U.S.C. § 314(b)(1); 37 C.F.R. § 42.107(b). The PTAB has not yet
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`accorded the ’493 Petition a filing date but, assuming a filing date is accorded in March, the
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`Institution Decision is expected before the end of September 2020. See Simmons Decl., ¶ 14; 35
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`U.S.C. § 314(b)(1); 37 C.F.R. § 42.107(b). Thus, Institution Decisions for all ten IPR petitions
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`are expected before the currently-scheduled October 26 trial date in this case.
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`2
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`This case is still in the fact discovery stage, and expert discovery has not yet started.
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`Simmons Decl., ¶ 18. Most of fact discovery closes on March 31, 2020. See D.I. 46. But due to
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`the COVID-19 pandemic, the Court extended the deadline for fact depositions to April 21, 2020.
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`See D.I. 232. The current Docket Control Order sets the close of expert discovery for June 16,
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`2020, dispositive motions for June 30, 2020, and jury trial starting on October 26, 2020. Id.
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`III. ARGUMENT
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`District courts have broad discretion to manage their dockets, including the power to stay
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`proceedings. The Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848-49
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`(Fed. Cir. 2008) (citing Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936) (“[T]he power to stay
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`proceedings is incidental to the power inherent in every court to control the disposition of the
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`causes on its docket with economy of time and effort for itself, for counsel, and for litigants.”)).
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`In this district, “courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay
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`will likely result in simplifying the case before the court.” NFC Tech. LLC v. HTC Am., Inc.,
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`No. 2:13-CV-1058, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.).
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`Apple filed IPR Petitions challenging all currently-asserted claims within four and a half
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`months of Maxell’s preliminary claim election, and all three factors strongly favor a stay.
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`A. Maxell Will Suffer No Undue Prejudice Or Tactical Disadvantage
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`Maxell does not compete with Apple. See, e.g., D.I. 111, ¶¶ 1-3. Indeed, Maxell has
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`conceded that it does not use any of the Patents-in-Suit. See, e.g., D.I. 66 at 22. Maxell will,
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`therefore, not be prejudiced at all by a stay because it can be fully compensated for any alleged
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`harm by monetary damages. See NFC, 2015 WL 1069111 at *2 (finding no prejudice because
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`“[Plaintiff] does not dispute [Defendant’s] contention that it does not compete with [Defendant]
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`and that monetary relief will be sufficient to compensate it for any injury to its patent rights.”).
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`Maxell’s own delay in filing this case confirms that it would not be prejudiced by a stay.
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`Seven of the ten Patents-in-Suit issued over 10 years before Maxell filed this case, with another
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`having issued over 6 years before this case. See D.I. 1 at ¶¶ 15, 34, 63, 76, 106, 119, 149. And
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`Maxell accuses products that Apple began selling in 2012. That Maxell (and its predecessor-in-
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`interest) waited years after these patents issued before suing belies any claim that a stay will be
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`prejudicial. As this Court and others have explained, a delay in vindicating patent rights “alone”
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`is “not sufficient” to defeat a stay motion. See, e.g., NFC Tech., 2015 WL 1069111 at *2 (citing
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`E-Watch, Inc., 2013 WL 5425298, at *2); see also Semiconductor Energy Lab. Co. v. Chimei
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`Innolux Corp., No. SACV 12-21, 2012 WL 7170593, at *3 (C.D. Cal. Dec. 19, 2012).
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`Rather than cause prejudice, let alone undue prejudice, a stay will benefit both parties by
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`allowing them to take advantage of the PTAB’s expertise and the IPR process, which constitutes
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`“a more efficient and streamlined patent system that will improve patent quality and limit
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`unnecessary and counterproductive litigation costs.” 77 Fed. Reg. at 48,680-01.
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`B.
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`The Proceedings Are Not Advanced And Discovery Is Not Yet Complete
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`As of the filing of this motion, the parties are still engaged in fact discovery, have at least
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`17 remaining fact depositions to complete and a number of other pending discovery requests and
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`disputes, and have not begun expert discovery. See, e.g., VirtualAgility Inc. v. Salesforce.com,
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`Inc., 759 F.3d 1307, 1316 (Fed. Cir. 2014) (the time of the motion is the relevant time from
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`which to measure the stage of litigation under this factor). Most importantly, trial is still more
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`than seven months away. Because “the bulk of the expenses that the parties would incur . . . are
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`still in the future,” the stage-of-the-litigation factor favors a stay. NFC, 2015 WL 1069111 at *3;
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`see also Smartflash LLC v. Apple Inc., 621 Fed. Appx. 995, 1005 (Fed. Cir. 2015) (“Despite the
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 9 of 16 PageID #: 9320
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`substantial time and effort already spent in this case, the most burdensome task is yet to come. A
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`determination from the PTAB that all the asserted claims are patent ineligible will spare the
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`parties and the district court the expense of any further litigation, including a trial.”).
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`Apple’s diligence in filing the IPRs also supports granting the stay. See Software Rights
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`Archive, LLC v. Facebook, Inc., No. 12–3970, 2013 WL 5225522, at *6 (N.D. Cal. Sept. 17,
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`2013) (granting a stay where IPRs were filed four months after plaintiff’s identification of
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`asserted claims). Maxell asserted a large number of claims—90 claims—at the beginning of this
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`case that it never could have possibly tried, and only narrowed that number to 40 on November
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`6, 2019. See Simmons Decl., ¶¶ 15, 17. After Maxell narrowed its asserted claims further,
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`Apple promptly evaluated the prior art, identified and analyzed invalidating prior art for each
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`asserted claim, coordinated with technical experts, drafted ten IPR Petitions, and filed its
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`petitions by March 17, 2020, within four and a half months after Maxell’s narrowing. See id., ¶¶
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`5-14. In view of the complexity of the case and the number of patents and claims asserted,
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`Apple has irrefutably been diligent in preparing and filing its IPR petitions.
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`C.
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`The Stay Will Likely Simplify This Case
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`Courts have identified several ways courts and parties may benefit from a stay pending
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`IPR, including: (1) allowing the PTAB, with its particular expertise, to consider prior art and
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`invalidity issues before they are presented to the Court; (2) alleviating discovery problems
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`relating to invalidity issues; (3) encouraging settlement without further use of the Court;
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`(4) limiting the issues, defenses, and evidence at pretrial conferences and at trial; (5) reducing the
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`costs and burdens for both the parties and the Court; and (6) avoiding the possibility of
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`inconsistent results on the invalidity issues considered by the PTAB. See Interface, Inc. v.
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`Tandus Flooring, Inc., No. 4:13-cv-46-WSD, 2013 WL 5945177, at *4 (N.D. Ga. Nov. 5, 2013);
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`Capriola Corp. v. LaRose Indus., LLC, No. 8:12-cv-2346-T-23TBM, 2013 WL 1868344, at *1
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`5
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`(M.D. Fla. Mar. 11, 2013); Destination Maternity Corp. v. Target Corp., 12 F. Supp. 3d 762, 766
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`(E.D. Penn. 2014). Apple’s requested stay would provide all of these benefits.
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`A stay would be particularly beneficial in this case because of the complex nature of the
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`case, including ten Patents-in-Suit, from eight different patent families, relating to different
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`technologies, asserted against hundreds of accused products. See D.I. 111. As noted above,
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`Maxell’s claim charts in its Infringement Contentions total over 3,700 pages, further illustrating
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`the broad scope and complexity of the issues presented in this case. Simmons Decl., ¶ 16.
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`Statistically, there is a high probability that the IPRs will simplify the case by resulting in
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`a determination that some or all of the claims are invalid. See Wonderland Nurserygoods Co. v.
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`Baby Trend, Inc., No. EDCV 14-1153-VAP(SPx), 2015 U.S. Dist. LEXIS 53053, at *7, *12
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`(C.D. Cal. Apr. 20, 2015) (granting pre-institution stay and explaining that “because Defendants
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`have petitioned for review of all claims asserted in this action, the outcome of the IPR has the
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`potential to be case-dispositive”). The USPTO’s published statistics show that the PTAB has
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`instituted review on approximately 66% of all IPR petitions challenging “Electrical/Computer”
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`patents filed to date that have reached an institution decision. Simmons Decl., Ex. A at 7.
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`Among the petitions instituted for review, 80% of Final Written Decisions published by the
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`PTAB upon completion of trial resulted in the cancellation of some or all of the reviewed claims,
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`and 62% resulted in the cancellation of all claims instituted for review. Id., Ex. A at 11. And,
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`based on statistics from Lex Machina, among all IPR petitions filed by Apple that reached the
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`institution stage, 72% (311 out of 434 petitions) were granted for review. Id., Ex. B at 1.
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`Among the Apple proceedings that resulted in a Final Written Decision, 90% (174 out of 194
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`decisions) resulted in the cancellation or amendment of at least some claims, and 74% (143 out
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`of 194 decisions) resulted in the cancellation of all challenged claims. Id. Similarly, among all
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`petitions filed by Apple’s IPR counsel that reached the institution stage, 79% (88 out of 112
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`petitions) were granted for review. Id., Ex. C at 1. These statistics support a “fair inference that
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`the issues in this case are apt to be simplified and streamlined to some degree as a result of the
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`[IPR] proceedings.” Ever Win Int’l Corp. v. Radioshack Corp., 902 F. Supp. 2d 503, 506 (D.
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`Del. 2012); see also Select Comfort Corp. v. Tempur Sealy Int’l, No. 14-245 (JNE/JSM), 2014
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`U.S. Dist. LEXIS 183450, at *11 (D. Minn. Oct. 10, 2014) (granting stay where the USPTO’s
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`then current statistics indicated a “3-out-of-4 chance that the USPTO will grant the petition for
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`an IPR”).
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`Under any outcome of the IPRs, a stay pending completion of the IPRs will simplify the
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`issues remaining for trial. Any claim cancelled by the PTAB during an IPR is rendered void ab
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`initio. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1346 (Fed. Cir. 2013). Thus,
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`cancellation of all the asserted claims would completely resolve this case, and cancellation of
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`some asserted claims would reduce the number of claims remaining for trial. And if Maxell
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`amends its claims during the IPR proceedings, then there will be no liability for any infringement
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`of the original, pre-amendment claims. 35 U.S.C. § 318(c). Even in the unlikely scenario that
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`every single one of the asserted claims survive IPR without amendment, a stay is still likely to
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`simplify the case. For example, Maxell’s submissions to the PTAB can narrow the scope of any
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`claims that survive review. See, e.g., Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362
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`(Fed. Cir. 2017) (“[S]tatements made by a patent owner during an IPR proceeding, whether
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`before or after an institution decision, can be considered for claim construction and relied upon
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`to support a finding of prosecution disclaimer.”). Thus, the file histories of all of the Patents-in-
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`Suit—and the scope of their claims—will remain in flux until the IPRs are complete.
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`Accordingly, it makes sense to stay this case pending the IPR proceedings to prevent duplicative
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`and potentially conflicting results.
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`In addition, if the PTAB issues a Final Written Decision confirming the patentability of
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`certain claims, and that decision is upheld on appeal, Apple will be estopped from arguing here
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`that such claims (if any) are invalid on any ground that Apple “raised or reasonably could have
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`raised” during the IPRs. See 35 U.S.C. § 315(e)(2). And the Supreme Court’s holding in SAS
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`guarantees that the invalidity issues in this case will be narrowed if the PTAB institutes review
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`on any petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1360 (2018); see also 454 Life Scis.
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`Corp. v. Ion Torrent Sys., Inc., No. 15-cv-595-LPS, 2016 WL 6594083, at *3 (D. Del. Nov. 7,
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`2016) (“Even if the IPR proceedings result in all of the Asserted Claims remaining valid, the fact
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`that Defendants will be estopped—from asserting in this litigation any ground for invalidity that
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`they ‘raised or reasonably could have raised’ during the IPR proceedings[]—and the creation of
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`additional prosecution history … will simplify the issues left to be litigated in this case.”). The
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`statutory estoppel, combined with the PTAB’s guidance on claim scope, will narrow and
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`streamline this litigation even in the unlikely event that all asserted claims survive review.
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`Discovery in this case has already been and is expected to continue to be complex and
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`expensive. Due to the different technologies at issue, the parties have disclosed more than a
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`dozen experts expected to submit expert reports. Staying this case until all the IPRs are complete
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`would promote judicial economy and avoid potentially wasteful discovery efforts. See, e.g.,
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`NFC, 2015 WL 1069111, *4 (“Many discovery problems relating to prior art can be alleviated
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`by the PTO examination.”); Target Therapeutics, Inc. v. SciMed Life Sys., Inc., No. 94-20775,
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`1995 WL 20470, at *2 (N.D. Cal. Jan. 13, 1995) (reasoning that it “makes sense to ascertain the
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`ultimate scope of the claims before trying to figure out whether defendants’ products infringe the
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`patent-in-suit” in order to avoid conducting a “significantly wider scope of discovery than
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`necessary” to examine “the validity of claims which are modified or eliminated altogether during
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`reexamination”).
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`In summary, a stay pending completion of the IPRs would resolve or significantly
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`simplify issues under any outcome of the proceedings, whether the claims are affirmed or
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`cancelled. Therefore, this factor weighs strongly in favor of a stay.
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`D.
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`The Court Should Grant The Requested Stay Now
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`Although courts in this District typically have not granted motions to stay before
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`institution, this Court should do so here because of the particularly complex nature of this case,
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`which is demonstrated in detail above. With ten Patents-in-Suit asserted against hundreds of
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`accused products in this case, the IPR proceedings—regardless of outcome—will narrow or even
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`eliminate the issues the jury must consider during trial. To conserve the resources of the Court
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`and the parties, a pre-institution stay is particularly appropriate. And granting a pre-institution
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`stay will not unduly prejudice Maxell because even if the PTAB denies the IPR petitions, “the
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`stay will be relatively short and the action can continue with minimal delay.” Limestone v.
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`Micron Tech., No. SA CV 15-0278-DOC(RNBx), 2016 WL 3598109, at *4 (C.D. Cal. Jan. 12,
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`2016) (internal citations omitted).
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`Applying factors similar to those used by this Court, courts in other districts routinely
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`grant motions to stay before institution decisions. See, e.g., Vanair Mfg., Inc. v. VMAC Glob.
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`Tech. Inc., No. 2:17-CV-236-JVB-JEM, 2018 WL 1566815, at *2-3 (N.D. Ind. Mar. 30, 2018);
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`Goodman v. Samsung Elecs. Am., Inc., No. 17-CV-5539 (JGK), 2017 WL 5636286, at *4
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`(S.D.N.Y. Nov. 22, 2017); SCA Hygiene Prod. Aktiebolag v. Cascades Canada, ULC, No. 17-
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`CV-282-WMC, 2017 WL 4484495, at *3 (W.D. Wis. Oct. 6, 2017); SCA Hygiene Prod.
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`Aktiebolag (“AB”) v. Tarzana Enterprises, LLC, No. CV17-04395-AB(JPRx), 2017 WL
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 14 of 16 PageID #: 9325
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`
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`5952166, at *6 (C.D. Cal. Sept. 27, 2017); St. Martin Investments, Inc. v. Bandit Indus., Inc., No.
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`1:17-CV-472, 2017 WL 6816506, at *3 (W.D. Mich. Aug. 30, 2017); Acoustic Tech., Inc. v.
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`Silver Springs Networks, Inc., No. 17-CV-02176-SK, 2017 WL 6001615, at *3 (N.D. Cal. July
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`25, 2017); Elm 3DS Innovations LLC v. Micron Technology Inc. et al., No. 14-01431 (D. Del.
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`July 11, 2016) (oral order granting stay prior to institution); E-Watch, Inc. v. Lorex Canada, Inc.,
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`No. CIV.A. H-12-3314, 2013 WL 5425298, at *5 (S.D. Tex. Sept. 26, 2013).
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`Should the Court conclude this case does not warrant a pre-institution stay pending IPR,
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`Apple requests the Court deny this Motion without prejudice and with leave to renew the Motion
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`(with expedited briefing) upon the PTAB’s issuance of institution decisions. When the PTAB
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`has instituted review, “courts have been nearly uniform in granting motions to stay.” Cellular
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`Commc’ns Equip., LLC v. Samsung Elecs. Co., No. 6:14-CV-759, 2015 WL 11143485, at *3
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`(E.D. Tex. Dec. 16, 2015). Given the anticipated timing of the PTAB’s institution decisions, the
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`last of which is expected by no later than September 2020, relative to the October 2020 trial date,
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`expedited briefing on Apple’s anticipated renewed motion to stay would be appropriate.2
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`IV. CONCLUSION
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`For the foregoing reasons, Apple respectfully requests the Court stay this litigation
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`pending the resolution of Apple’s IPR petitions.
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`
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`2 Should the Court grant Apple’s request for expedited briefing, Apple proposes that Maxell be
`given no more than five business days to respond to Apple’s anticipated post-institution motion
`to stay pending IPR and that neither party be permitted to file a reply or sur-reply.
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`10
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 15 of 16 PageID #: 9326
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`DATED: March 24, 2020
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`Respectfully submitted,
`
`/s/ Luann L. Simmons
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
`
`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
`
`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Attorneys for Defendant Apple Inc.
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`11
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`Case 5:19-cv-00036-RWS Document 239 Filed 03/24/20 Page 16 of 16 PageID #: 9327
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on March 24, 2020.
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`/s/ Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that counsel for Apple and Maxell complied with the meet and confer
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`requirement specified in E.D. Tex. Local Rule CV-7(h) on March 23, 2020. No agreement was
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`reached because Plaintiff refused to agree to a stay of this litigation. Discussions have
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`conclusively ended in an impasse, leaving an open issue for the Court to resolve. This motion is
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`opposed.
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`
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`/s/ Melissa R. Smith
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`12
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