Case 5:19-cv-00036-RWS Document 506 Filed 08/21/20 Page 1 of 21 PageID #: 27260
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` IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S
`RENEWED MOTION TO STAY PENDING DETERMINATION OF INTER PARTES
`REVIEW OF THE PATENTS-IN-SUIT
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`Case 5:19-cv-00036-RWS Document 506 Filed 08/21/20 Page 2 of 21 PageID #: 27261
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`TABLE OF CONTENTS
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`Page
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`Factual Background ........................................................................................................... 2
`Legal Standard ................................................................................................................... 5
`Analysis.............................................................................................................................. 5
`A.
`The Prejudice Factor Weighs Against Stay ........................................................... 5
`B.
`The Stage of the Proceedings Weighs Strongly Against Stay ............................... 7
`1.
`Discovery is Largely Complete and Trial Has Been Set ........................... 8
`2.
`Apple Unreasonably Delayed the Filing of its IPRs ................................ 10
`The Narrow Potential Simplification of the Case Weighs Against Stay ............. 11
`C.
`Conclusion ....................................................................................................................... 15
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`I.
`II.
`III.
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`IV.
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ....................................................................4
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`Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd.,
`No. 2:15-cv-00011-RSP, 2016 WL 1162162 (E.D. Tex. Mar. 23, 2016) ................................12
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`Fall Line Patents, LLC v. Am. Airlines Grp.,
`No. 6:17-cv-00202-RWS, 2018 WL 4169251 (E.D. Tex. May 21, 2018) ............................5, 6
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`Image Processing Techs., LLC v. Samsung Elecs. Co., Ltd.,
`No. 2:16-cv-505-JRG, Dkt. No. 306 (E.D. Tex. Oct. 25, 2017) ..............................................12
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`JumpSport, Inc. v. Acad., Ltd.,
`No. 6:17-CV-00414-RWS, 2018 WL 1806900 (E.D. Tex. Apr. 17, 2018) ...........................6, 7
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`NFC Tech. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ............................................6
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`Parallel Networks Licensing, LLC v. Ramquest Software, Inc.,
`No. 4:19-cv-487, 2020 WL 1236266 (E.D. Tex. Mar. 13, 2020) ..............................................6
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`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-cv-00390-RWS-RSP, 2019 WL 3826051 (E.D. Tex. Aug. 14, 2019) ...........7, 12, 13
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`Realtime Data LLC v. Actian Corporation,
`No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June 14, 2016) ............................7
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`Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`No. 2:15-cv-349-JRG, 2017 WL 3396399 (E.D. Tex. Jan. 17, 2017) .....................................12
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`SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .............................................................................................................13
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`Smartflash LLC v. Apple Inc.,
`621 F. App’x 995 (Fed. Cir. 2015) ......................................................................................9, 12
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`SSL Servs., LLC v. Cisco Sys., Inc.,
`No. 2:15-cv-433-JRG-RSP, 2016 WL 3523871 (E.D. Tex. June 28, 2016) ...........................12
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`Stragent, LLC v. BMW of N. Am., LLC,
`No. 6:16-cv-446-RWS-KNM, 2017 WL 2839260 (E.D. Tex. Apr. 20, 2017) ......................7, 8
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`Tessera Advanced Techs., Inc. v. Samsung Elecs. Co.,
`No. 2:17-cv-00671-JRG, 2018 WL 3472700 (E.D. Tex. July 19, 2018).................................11
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`Tinnus Enters., LLC v. Telebrands Corp.,
`No. 6:15-cv-551, 2017 WL 379471 (E.D. Tex. Jan. 24, 2017) ...............................................12
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`TracBeam, L.L.C. v. T-Mobile US, Inc.,
`No. 6:14-cv-678, 2016 WL 9225574 (E.D. Tex. Mar. 29, 2016) ..............................................7
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`Trover Grp., v. Dedicated Micros USA,
`No. 2:13-cv-1047-WCB, 2015 WL 1069179 (E.D. Tex. Mar. 11, 2015) ................................14
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`Statutes
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`35 U.S.C. § 112 ..............................................................................................................................12
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`35 U.S.C. § 314(a) ...........................................................................................................................4
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`The Court rightfully denied Apple’s first premature motion to stay this case after the filing
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`of Apple’s petitions for inter partes review. In doing so, the Court held that each factor considered
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`weighed against a stay, specifically making the following findings:
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`• Undue Prejudice: “[T]he time allowed for the IPR decision as well as a potential
`appeal could cause a lengthy delay that would significantly prejudice Maxell.”
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`• Stage of the Proceedings: “The case is not in its infancy and is far enough along
`that a stay would interfere with ongoing proceedings.”; “Apple has not sufficiently
`explained its delay in filing the petitions.”
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`• Simplification of Issues: “[A]any finding at this time as to the likelihood of
`simplification would be pure speculation.”
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`D.I. 298 at 3, 4, 6.
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`The factors weigh even more against a stay now. Since the Court’s first ruling on the issue,
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`the case has progressed even further, with summary judgment and Daubert briefing now complete,
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`and the PTAB has now denied a majority of Apple’s IPR petitions for which institution decisions
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`have been rendered. Thus, the factors of undue prejudice and stage of the proceedings still
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`unquestionably weigh against a stay. As to likely simplification, some speculation has now been
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`removed. Specifically, it is now clear that the IPR proceedings cannot simplify issues for at least
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`half of the Asserted Patents. In contrast, the amount of simplification that could arise with respect
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`to the four patents subject to instituted IPRs and the one patent whose institution decision remains
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`outstanding, remains questionable.
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`The timing of the IPRs was completely within Apple’s control. Though it could have filed
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`its petitions when the case was in its earlier stages, and thereby limit in part the potential prejudice
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`to Maxell from a stay pending resolution of the proceedings, it chose instead to wait. As the Court
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`observed in its last denial of Apple’s stay request: “Apple has not sufficiently explained its delay
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`in filing the [IPR] petitions. Apple filed its first wave of petitions nine months after Maxell filed
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`suit and six months after Maxell served its initial infringement contentions.” D.I. 298 at 4-5. The
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`Court concluded that “[t]he case is not in its infancy and is far enough along that a stay would
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`interfere with ongoing proceedings.” Id. at 4. The Court’s statements are even more relevant now,
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`where the parties’ and the Court’s work has progressed to the pretrial preparation stage. Apple’s
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`latest attempt to avoid a fair trial should be denied.
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`I.
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`Factual Background
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`Apple’s “Factual Background” paints an inaccurate picture of the negotiations that led to
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`the present lawsuit, the value of the Asserted Patents, and Apple’s “diligence” and “success” in
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`filing its IPRs.
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`Hitachi raised Apple’s infringement of the smartphone portfolio in June 2013. See D.I. 111,
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`¶5.
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` When it
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`was clear Apple’s stance had not changed (and would not change), this lawsuit followed.
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`At the same time these discussions were happening, Maxell was also taking substantive
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`steps to enforce its patent rights against others, including through the filing of over 10 lawsuits
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`regarding many of the same asserted patents, patents from the same families, and/or other patents
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`from Maxell’s smartphone portfolio. Maxell even took one case to trial. That Apple’s infringement
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`was not the first that Maxell sought to remedy through the judicial system does not mean that such
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`infringement did not damage Maxell. It only reflected Maxell’s effort to attempt to resolve the
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`issue outside of Court. Maxell takes Apple’s continued infringement very seriously.
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`Whether or not Apple believes the Asserted Patents to be “crown jewels,” Maxell’s expert,
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`Carla Mulhern, has determined that Apple’s infringement of such patents has resulted in
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` in damages to Maxell. Miller Decl. ¶ 4. This may be a drop in the bucket to Apple, but not
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`to Maxell. And the value of the Asserted Patents is in no way lessened by the fact that Maxell
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`agreed, at the outset of the case and at Apple’s request, to focus the asserted claims as the litigation
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`went forward. That does not make Maxell’s initial assertion a “spaghetti-on-the-wall” approach.
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`Apple has also narrowed its invalidity arguments as the case proceeded, but Apple would not
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`characterize its initial invalidity contentions as a “spaghetti-on-the-wall” approach.
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`As this Court has recognized, Apple filed its first wave of IPR petitions nine months after
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`Maxell filed suit and six months after Maxell served its initial infringement contentions. D.I. 298
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`at 4-5 (citing D.I. 267 at 8-9). Apple filed its final petition just one day before the one-year
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`deadline, and nine months after receiving Maxell’s infringement contentions. Id. Apple’s IPR
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`petitions were directed to 86 of the 90 claims initially asserted by Maxell in its infringement
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`contentions, and were subject to no discernable narrowing consistent with Maxell’s narrowing
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`pursuant to the Focus Order. Miller Decl. ¶ 5; D.I. 298 at 5.
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`Since the filing of its original motion, the PTAB has denied five of Apple’s ten petitions.
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`Mot. at Simmons Decl. ¶¶ 23, 24; Miller Decl. ¶¶ 6-8 (three denials were issued on August 11,
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`2020, after the filing of Apple’s renewed motion). Institution was denied on four of the IPRs under
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`35 U.S.C. § 314(a) due to, among other reasons, the advanced stage of this litigation. Miller Decl.
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`¶¶ 6-9; Exs. O-R (Decisions Denying Institution). Specifically, after analyzing the factors set forth
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`in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the
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`PTAB in each proceeding held:
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`Based on the particular circumstances of this case, we determine that instituting an
`inter partes review would be an inefficient use of Board resources. As discussed
`above, the trial in the underlying litigation is currently scheduled to begin in [less
`than/approximately] four months and may conclude several months before we
`would reach a final decision in this proceeding. The district court and the parties
`have expended effort in preparing for the upcoming trial that will address issues
`that substantially overlap with those raised in the Petition.
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`Exs. O-R (Decisions Denying Institution) at Conclusion.
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`Institution has been granted for only four of the IPRs. Mot. at 3. For each instituted IPR,
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`Maxell has filed a request for rehearing before the Precedential Opinion Panel (“POP”). Miller
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`Decl. ¶¶ 10-13; Exs. S-V (Patent Owner’s Requests for Rehearing). Specifically, Maxell has
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`asserted in its requests that the PTAB’s weighing of the Fintiv factors was unreasonable and that
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`the POP should clarify Factor 4 and reweigh all factors. Exs. S-V (Patent Owner’s Requests for
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`Rehearing). No decision has yet been made on Maxell’s requests for rehearing and the ultimate
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`decision on whether the instituted IPRs will continue is pending.
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`In this case, the Court has reset the Pre-Trial Conference for November 12, 2020 and Trial
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`for December 7, 2020. D.I. 495. The Order did not impact the hearing for dispositive and Daubert
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`motions, which remains scheduled for September 15, 2020.
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`II.
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`Legal Standard
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`District courts consider three factors when determining whether to grant a stay pending
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`inter partes review: (1) whether the stay will unduly prejudice the nonmoving party, (2) whether
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`the proceedings before the court have reached an advanced stage, including whether discovery is
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`complete and a trial date has been set, and (3) whether the stay will likely result in simplifying the
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`case before the court.” Fall Line Patents, LLC v. Am. Airlines Grp., No. 6:17-cv-00202-RWS,
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`2018 WL 4169251, at *1 (E.D. Tex. May 21, 2018) (internal citations omitted).
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`III. Analysis
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`When Apple filed its original motion, the Court held that each factor weighed against a
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`stay. D.I. 298. As shown below, that remains true.
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`A.
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`The Prejudice Factor Weighs Against Stay
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`The Court has already considered and rejected Apple’s arguments with respect to the
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`prejudice factor. No intervening facts would favor departure from this ruling. For example, the
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`Court directly addressed the impact of Apple’s assertion that Maxell does not use any of the
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`Asserted Patents,1 holding “[t]he mere fact that [Maxell] is not currently practicing the patents
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`does not mean that, as a matter of law, it is not prejudiced by a substantial delay of an imminent
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`trial date.” D.I. 298 at 3 (citing Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-
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`cv-213-JRG-RSP, 2015 WL 627887, at *2 (E.D. Tex. Jan. 29, 2015)).
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`This Court also rejected Apple’s argument that the mere delay in collection of monetary
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`damages is not prejudicial,2 holding that “Maxell has an interest in the timely enforcement of its
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`patent rights” and “[a]ssuming the PTAB institutes at least one IPR petition, the time allowed for
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`1 As Maxell explained in its Opposition to Apple’s original motion, Maxell has not admitted that it does not practice
`any Asserted Patent, only that it has not evaluated its own products to make such determination. D.I. 267 at 2.
`2 Although Apple somehow has concluded that Maxell cannot obtain injunctive relief (Mot. at 13), the issue has not
`been briefed or argued and thus remains open. Because the Court has already addressed the impact of Maxell’s request
`for such relief on Apple’s motion for stay (D.I. 298 at n. 3), Maxell will not address it further here.
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`the IPR decision as well as a potential appeal could cause a lengthy delay that would significantly
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`prejudice Maxell.” Id. (citing Realtime Data LLC v. Actian Corporation, No. 6:15-cv-463-RWS-
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`JDL, 2016 WL 3277259, at *2 (E.D. Tex. June 14, 2016); NFC Techs. LLC v. HTC Am., Inc., Case
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`No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015)). While such delay
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`and prejudice may not alone defeat a stay motion, countless courts, including this one as well as
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`those cited in Apple’s Renewed Motion, have held that it cuts slightly against a stay. Id.; NFC,
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`2015 WL 1069111, at *2; Parallel Networks Licensing, LLC v. Ramquest Software, Inc., No. 4:19-
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`cv-487, 2020 WL 1236266, at *2-3 (E.D. Tex. Mar. 13, 2020).
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`In its Renewed Motion, Apple does not challenge that a lengthy delay from stay is likely,
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`only that it would not significantly prejudice Maxell in view of Maxell’s “delay in bringing this
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`case.” Mot. at 13. But this argument, too, was previously raised to no avail. As Maxell explained,
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`there was no “delay” by Maxell in pursuing its rights. Maxell began licensing negotiations with
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`Apple regarding its patents (including several Asserted Patents) in 2013.
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`. Miller Decl. ¶ 3; Ex. M (Maxell Response to Interrogatory No. 1); Ex. N (
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`). It ultimately appeared, however, that Apple had no intention of
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`resolving the issues between the parties and that litigation would be necessary. Maxell then filed
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`this suit. Thus, Maxell did not sit idly by and delay adjudication of its rights.3 Apple’s cited case
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`(from another district) does not hold that a party such as Maxell, who sought to resolve
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`infringement through friendly negotiations before litigation, cannot be unduly prejudiced through
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`3 Furthermore, during this same time period Maxell was taking substantive steps to enforce its patent rights against
`others.
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`delay of such litigation once filed. See, e.g., JumpSport, Inc. v. Acad., Ltd., No. 6:17-CV-00414-
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`RWS, 2018 WL 1806900, at *2 (E.D. Tex. Apr. 17, 2018) (“Balancing this minor delay in
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`enforcement of Plaintiff’s rights against the possibility that… PTAB proceedings could cause
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`further delay, this factor weighs slightly against a stay.”).
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`Apple’s allegations regarding the amount of time that Maxell has held IP rights to the
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`Asserted Patents and/or that Apple has been selling infringing products rests on an incomplete
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`picture of this litigation. Two of the patents Maxell asserts in this case issued in 2018 or later—
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`one just one month prior to Maxell’s filing of this case. Regardless, courts in this District have
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`held that, even where the “patents-in-suit are set to expire, Plaintiff still has an interest in
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`enforcement of its rights for past and current infringement.” JumpSport, 2018 WL 1806900, at *2.
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`If Apple’s motion is granted, this case is not likely to resume until December 20224—two
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`full years after the rescheduled trial. Where a party waited until the final days to file IPRs and/or
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`the stay would significantly delay resolution of the case, the Court has found the factor to weigh
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`against a stay. See, e.g., TracBeam, L.L.C. v. T-Mobile US, Inc., No. 6:14-cv-678, 2016 WL
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`9225574, at *1 (E.D. Tex. Mar. 29, 2016); Peloton Interactive, Inc. v. Flywheel Sports, Inc., No.
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`2:18-cv-00390-RWS-RSP, 2019 WL 3826051, at *4 (E.D. Tex. Aug. 14, 2019); Realtime Data,
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`2016 WL 3277259, at *2. Apple strung Maxell along for over five years of negotiations, it should
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`not be permitted to delay resolution of this issue, and prejudice Maxell, even further by virtue of
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`its own unreasonably delayed filing of IPRs.
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`B.
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`The Stage of the Proceedings Weighs Strongly Against Stay
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`This factor includes two sub-factors: “(1) whether discovery is complete and whether a
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`trial date has been set; and (2) whether the movant has unreasonably delayed filing its IPR petition
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`4 See D.I. 267 at 4, Ex. B (stating that final written decisions on Apple’s IPRs are not expected before June 2021 and
`noting the median time for relevant appeals of 15 months).
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`and motion to stay.” Stragent, LLC v. BMW of N. Am., LLC, No. 6:16-cv-446-RWS-KNM, 2017
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`WL 2839260, at *2 (E.D. Tex. Apr. 20, 2017) (citing SSL Servs., LLC v. Cisco Sys., Inc., No. 2:15-
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`cv-433-JRG-RSP, 2016 WL 3523871, at *1 (E.D. Tex. June 28, 2016)).
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`1.
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`Discovery is Largely Complete and Trial Has Been Set
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`Even in denying Apple’s first motion to stay four months ago, the Court held that “[t]he
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`case is not in its infancy and is far enough along that a stay would interfere with ongoing
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`proceedings.” D.I. 298 at 4 (citing Uniloc 2017 LLC v. Samsung Elec. Am., Inc., No. 2:19-cv-
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`00259-JRG-RSP, 2020 WL 1433960, at *5 (E.D. Tex. Mar. 24, 2020); NFC, 2015 WL 1069111,
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`at *4). The Court’s decision at that point was based on the fact that claim construction was
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`complete and the parties had nearly completed fact discovery, save for certain depositions
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`rescheduled due to COVID-19. Id. The case has since advanced even further. Expert discovery is
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`complete and, by the time Apple filed its Renewed Motion, all briefing in connection with
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`dispositive and Daubert motions and motions to strike was complete save for sur-replies related
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`to dispositive motions. The hearing on those motions is scheduled for September 15, 2020. D.I.
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`283. This Court correctly forecasted that, by the time institution decisions were being rendered,
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`“[t]he late stage of the proceedings will certainly weigh against granting a stay.” D.I. 298 at 6.
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`Even despite the foregoing, Apple still asserts that the stage of the proceedings favors a
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`stay because “the most burdensome work—the trial—remains.” Mot. at 9. Although Maxell does
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`not dispute that the remaining work may be taken into account, the fact trial remains is not
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`dispositive on the issue as Apple seems to suggest. The sub-factor directs courts to consider
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`“whether discovery is complete and whether a trial date has been set,” not whether all pre-trial
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`work has yet occurred. Stragent, 2017 WL 2839260, at *2. And Apple’s cited case law does not
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`support its proposed bright line rule. Rather, Apple points to Federal Circuit precedent related to
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`the factor of “whether a stay…will reduce the burden of litigation on the parties and on the court,”
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`which is considered in connection with stays pending CBM reviews. Mot. at 10 (citing Smartflash
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`LLC v. Apple Inc., 621 F. App’x 995, 999, 1005 (Fed. Cir. 2015)). But the Federal Circuit explicitly
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`cautioned that this factor is separate and distinct from the stage of litigation:
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`Apple downplays these facts [relating to stage of litigation], arguing that the work
`yet to be done in the case is still significant, but Apples argument addresses whether
`a stay would reduce the burden of litigation on the parties and on the court—a
`different and separate factor in the analysis—and does not alter the finding that
`discovery is complete and there has been a jury trial.
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`Smartflash, 621 F. App’x at 1001. Moreover, the issue before the Court involved two cases—one
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`that had gone to trial and one that had not. The Federal Circuit held that such distinction impacted
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`the factor relating to burden of litigation, but not that relating to stage of the case.5 Id. at 1005.
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`Even if the burden of litigation is taken into account, the Federal Circuit has stated that the
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`work already done by the parties and the court can be informative to provide context on how much
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`burden remains. Id. at 1004. As Maxell responded when Apple raised this issue in its original
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`motion, Maxell and the Court have invested significant time, energy, and expense into the litigation
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`of this case thus far such that, at least in this case, it is not clear that the most burdensome work
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`remains. As examples, Maxell has (1) briefed and argued a significant number of motions,
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`including briefing on 18 dispositive and Daubert motions and motions to strike; (2) prepared and
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`provided witnesses for deposition, including many who traveled from Japan; (3) worked through
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`Apple’s piece-meal production, including several rounds of review and re-review of source code;
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`(4) worked through discovery disputes, which necessitated the Court’s intervention on several
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`occasions; (5) briefed and argued claim construction, including also the costs associated with the
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`expert declarations and depositions; and (6) prepared expert reports and engaged in expert
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`depositions. See D.I. 267 at 7-8. And although Apple suggests it has not yet begun pre-trial
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`5 The Court’s decision in Smartflash also relied on the fact that CBM review had been granted on all asserted claims.
`Id. As discussed in Section III(C), that is not the case here.
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`preparations, the same is not true for Maxell, for whom pretrial work is well under way.
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` Given the foregoing, Apple’s re-urging that pre-trial preparations still remain provides no
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`basis on which the Court should reverse its earlier holding and find that this factor favors a stay.
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`2.
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`Apple Unreasonably Delayed the Filing of its IPRs
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`This Court also previously held that “Apple has not sufficiently explained its delay in filing
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`the petitions.” D.I. 298 at 4. With respect to Apple’s argument that it filed its petitions within four
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`months of Maxell’s preliminary claim election, the Court specifically found that the argument did
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`“not explain how the narrowed claims assisted in its preparation of the petitions.” Id. at 5. In its
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`Renewed Motion, Apple now attempts to provide the missing explanation. Specifically, Apple
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`claims that the additional time was needed in order to search for and evaluate prior art references
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`for each of the 90 claims initially at issue and further that Maxell’s initial narrowing of claims
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`“allow[ed] Apple to narrow its search and analysis to only those claims still at issue.” Mot. at 11.
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`An actual evaluation of the facts, however, reveals that Apple’s explanation is nothing more than
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`post hoc justification of its undue delay. As an initial matter, Apple’s argument is undermined by
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`the simple fact that Apple’s IPRs were not limited to the narrowed list of claims in Maxell’s
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`preliminary election. Moreover, of the 28 prior art references raised in Apple’s IPR petitions, 24
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`had been disclosed prior to Maxell’s preliminary election of asserted claims. Miller Decl. at ¶ 14.
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`The four new references related to petitions that were filed on December 19, 2019—one month
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`after the election. Mot. at Simmons Decl. ¶¶ 18, 21, 25. Moreover, one of the new references was
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`not even asserted against one of the preliminarily elected asserted claims. Miller Decl. ¶ 15.
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`With respect to Apple’s final IPR (on the ’493 Patent), which was filed three months later,
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`Apple attempts to justify the delay by arguing that the petition involved unique third-party
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`discovery issues that required additional time to resolve. But Apple itself stated in that petition:
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`The primary cited reference in this Petition is a user manual for a Casio digital
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`camera, Casio (Ex. 1004), disclosing almost all the limitations recited in the
`challenged independent claims. The only limitations not expressly disclosed by
`Casio are hardware and software components readily known in the art, as evidenced
`by the secondary reference, Juen, as well as the ’493 Patent itself, which admits
`some of these components were known.
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`Ex. W (IPR2020-00597 Pet. Excerpt) at 1. The referenced user manual, however, was discovered
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`by Apple in October 2019 and specifically discussed and charted in Apple’s November 2019
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`Motion for Leave to Supplement Invalidity Contentions. D.I. 130, 130-4. Juen was disclosed by
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`Apple in August 2019. Miller Decl. ¶ 14. There were no “unique third-party discovery issues that
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`required additional time to resolve.” Mot. at 11. Apple could easily have transformed its initial
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`claim charts into its IPR petition in less than four months, it simply chose to wait and file at the
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`deadline. The advancement of this case is a natural consequence of that choice.
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`The bottom line is that Apple waited until the second to last possible day to complete its
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`filing of IPRs on the Asserted Patents. Apple’s attempts to excuse its unreasonable delay—first
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`pointing to Maxell’s narrowing of the asserted claims and now Apple’s need for additional time to
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`review prior art—are both belied by the facts. This Court’s prior holding that Apple has not
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`sufficiently explained its delay should stand. This factor weighs against a stay. See, e.g., Tessera
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`Advanced Techs., Inc. v. Samsung Elecs. Co., No. 2:17-cv-00671-JRG, 2018 WL 3472700, at *3
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`(E.D. Tex. July 19, 2018)(“Samsung waited nine months from the initiation of these proceedings
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`and five months after service of infringement contentions to move for a stay. Samsung’s actions
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`here, in conjunction with Samsung’s Motion to Stay Proceedings Pending Arbitration … appear
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`to be yet another attempt to draw out these proceedings. Accordingly… the Court finds that this
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`factor weighs strongly against a stay.”).
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`C.
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`The Narrow Potential Simplification of the Case Weighs Against Stay
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`In every Eastern District of Texas case Apple cited that granted a stay despite the advanced
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`stage of the case, the likelihood of simplification factor weighed heavily in favor of stay. And that
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`is because, in every case, PTAB review had been granted on a majority, if not all, of the asserted
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`claims. See, e.g., Image Processing Techs., LLC v. Samsung Elecs. Co., Ltd., No. 2:16-cv-505-
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`JRG, Dkt. No. 306 at 2-3 (E.D. Tex. Oct. 25, 2017)(institution granted on 3 of 4 asserted patents);
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`Smartflash, 621 F. App’x 995 at 1005 (CBM review granted on all asserted claims); Ericsson Inc.
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`v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-cv-00011-RSP, 2016 WL 1162162, at *3 (E.D.
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`Tex. Mar. 23, 2016) (IPR instituted on all asserted claims); SSL Servs., 2016 WL 3523871, at *1
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`(IPR instituted on all asserted claims). In one case, all asserted claims had actually already been
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`reviewed and invalidated by the PTAB by time the issue was before the court. Tinnus Enters.,
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`LLC v. Telebrands Corp., No. 6:15-cv-551, 2017 WL 379471, at *2 (E.D. Tex. Jan. 24,
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`2017)(noting the “simplification factor weighs more strongly in favor of a stay when all of the
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`litigated claims are undergoing [administrative review].”).
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`Here, that is not the case. The PTAB has denied institution on half of the Asserted Patents
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`already, and Maxell has requested rehearing on the four IPRs for which institution was granted.
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`Thus, the only absolute certainty is that a stay will not simplify issues with respect to at least half
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`of the Asserted Patents. In fact, only 8 of the 22 remaining asserted claims are currently under
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`review by the PTAB. Where the potential for simplification is so narrow, courts have not found a
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`stay to be warranted. See, e.g., Saint Lawrence Commc’ns LLC v. ZTE Corp., No. 2:15-cv-349-
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`JRG, 2017 WL 3396399 (E.D. Tex. Jan. 17, 2017) (denying stay at advanced stage of case where
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`IPRs instituted on only 6 of 38 asserted claims). That Apple’s invalidity theories in this case will
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`exceed the scope of instituted IPRs is further confirmed by the fact that Apple’s IPR petitions
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`address neither the 35 U.S.C. § 112 issues, nor the invalidity arguments under § 101 that Apple
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`has raised in this case.6 See, e.g., Id.; Peloton, 2019 WL 3826051, at *3. Indeed, directly contrary
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`6 See, e.g., D.I. 360 (seeking summary judgment of subject matter ineligibility under § 101 for the ’306 and ’794
`Patents); D.I. 444 at 3 (discussing Dr. Menasce’s theory that the ’586 Patent lacks written description).
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`to the position it advances to this Court, Apple itself repeatedly argued to the PTAB that the issues
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`and prior art between the IPRs and this litigation are not overlapping. See, e.g., Ex. X (’794 Patent
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`IPR Preliminary Reply) at 9-10 (Section: “There is little to no overlap between the IPR and
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`Litigation”); Ex. Y (’991 Patent IPR Preliminary Reply) at 9-10 (same); Ex. Z (’586 Patent IPR
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`Preliminary Reply) at 8-10 (same); Ex. AA (’306 Patent IPR Preliminary Reply) at 9-10 (same).
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`Apple’s arguments directed to simplification from estoppel do not lessen these considerations.
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`Apple asserts throughout its brief that the PTAB is reviewing 40% of the remaining
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