Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 1 of 22 PageID #: 32229
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`
`
`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S
`MOTION TO STAY PENDING PROCEEDINGS AT THE PATENT OFFICE OR, IN
`THE ALTERNATIVE TO CONTINUE TRIAL DUE TO THE COVID-19 PANDEMIC
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 2 of 22 PageID #: 32230
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`TABLE OF CONTENTS
`
`
`Page
`
`Factual Background ........................................................................................................... 2
`Legal Standard ................................................................................................................... 4
`Analysis.............................................................................................................................. 5
`Prejudice, Stage of the Proceedings, and Potential Simplification Each
`A.
`Weigh Against A Stay Pending Post-Grant Proceedings ...................................... 5
`1.
`The Prejudice Factor Weighs Against Stay ............................................... 5
`2.
`The Stage of the Proceedings Weighs Strongly Against Stay ................... 8
`3.
`The Potential Simplification of the Case is Speculative and Thus
`Weighs Against Stay .................................................................................. 9
`Trial Should Not Be Continued in View of COVID-19 ...................................... 12
`1.
`Apple’s Presentation of the COVID-19 Statistics Are Misleading ......... 12
`2.
`The Court is Capable of Safely Conducting In-Person Proceedings ....... 13
`3.
`Proceeding with Trial Does Not Raise Due Process Concerns................ 14
`Conclusion ....................................................................................................................... 15
`
`B.
`
`i
`
`
`
`
`
`
`
`I.
`II.
`III.
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`IV.
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`

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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 3 of 22 PageID #: 32231
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-cv-00361-JRG, 2021 WL 465424 (E.D. Tex. Feb. 9, 2021) ..............................10, 11
`
`Blitzsafe Texas LLC v. Maserati North America Inc., et al.,
`No. 2:19-cv-00378, Dkt. No. 258 (E.D. Tex. Feb. 16, 2021) ..............................................4, 14
`
`Fall Line Patents, LLC v. Am. Airlines Grp.,
`No. 6:17-cv-00202-RWS, 2018 WL 4169251 (E.D. Tex. May 21, 2018) ............................4, 6
`
`Image Processing Techs., LLC v. Samsung Elecs. Co.,
`No. 2:20-cv00050, Dkt. 200 (E.D. Tex. June 29, 2020) ............................................................5
`
`KIPB LLC v. Samsung Electronics Co., Ltd.,
`Case No. 2:19-cv-00056-JRG-RSP, 2019 WL 6173365 (E.D. Tex. Nov. 20,
`2019) ........................................................................................................................................11
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................4
`
`NFC Techs. LLC v. HTC Am., Inc.,
`Case No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) .....................5, 8
`
`Optis Wireless Tech., LLC v. Apple Inc.,
`No. 2:19-cv-00066, Dkt. 387 (E.D. Tex. July 21, 2020) ...........................................................4
`
`Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc.,
`No. 2:19-cv-00225-JRG, 2021 WL 121154 (E.D. Tex. Jan. 13, 2021) ........................... passim
`
`Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc.,
`No. 2:19-cv-00225-JRG, Dkt. 205 (E.D. Tex. Nov. 23, 2020) ..................................................7
`
`Realtime Data LLC v. Actian Corporation,
`No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June 14, 2016) ........................5, 6
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`No. 2:13-cv-213-JRG-RSP, 2015 WL 627887 (E.D. Tex. Jan. 29, 2015) ............................5, 7
`
`Soverain Software LLC v. Amazon.com, Inc.,
`356 F.Supp.2d 660 (E.D. Tex. 2005) ...................................................................................7, 10
`
`Stragent, LLC v. BMW of N. Am., LLC,
`No. 6:16-cv-446-RWS-KNM, 2017 WL 2839260 (E.D. Tex. Apr. 20, 2017) ..........................9
`
`
`
`ii
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`

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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 4 of 22 PageID #: 32232
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`
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`Uniloc 2017 LLC v. Samsung Elec. Am., Inc.,
`NO. 2:19-cv-00259-JRG-RSP, 2020 WL 143360 (E.D. Tex. Mar. 24, 2020) ..........................8
`
`United States v. German,
`486 F.3d 849 (5th Cir. 2007) .....................................................................................................4
`
`VirnetX Inc., et al. v. Apple Inc.,
`Case No. 6:12-cv-00855-RWS, D.I. 945 (E.D. Tex. Oct. 15, 2020) .......................................13
`
`Other Authorities
`
`37 CFR §42.100(c)...........................................................................................................................3
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`
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`
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`iii
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`

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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 5 of 22 PageID #: 32233
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`Apple does not want to try this case. With its endless resources, Apple has tried every trick
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`in the book to delay, move, or otherwise avoid this trial—efforts that include motions to transfer,
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`motions to stay, two mandamus petitions, and serial filings at the Patent Office challenging the
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`same patents in multiple proceedings. This motion is just Apple’s latest effort.
`
`When the Court rescheduled trial from December 2020 to March 2021, Apple quickly
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`began constructing efforts to cause further delay. It reworked its denied Inter Partes Review
`
`petitions—some denied as early as June 2020 based on the same prior art—into requests for Ex
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`Parte Reexamination (“EPR”) beginning on December 10, 2020. At the same time, Apple was
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`pushing to narrow Maxell’s case for trial (an effort that we now know from Apple’s objection to
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`severance was intended to further delay Maxell’s day in court)—knowing all the while it intended
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`to request a stay/continuance. Though Apple no doubt hopes the Court overlooks the factual
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`deficiencies with its request (not one claim has been rejected in connection with the EPRs, indeed,
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`some have not yet even been granted review) and the resulting prejudice to Maxell in having its
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`case narrowed for trial if there are further delays, Apple’s backup is of course COVID-19. While
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`a request to delay for COVID-19 concerns is not unusual during this pandemic, it is unusual that
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`this is Apple’s first time requesting a continuance on this particular basis. That Apple chose not to
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`file a “COVID motion” prior to the last trial, but does so now when the current situation is
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`dramatically improved and improving, signals an ulterior motive. Apple does not seek a
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`continuance “until later this year,” but until Apple can find traction through its EPR filings
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`sufficient to obtain a stay for years.
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`But justice delayed is justice denied. This case has already been rescheduled twice. The
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`parties have been working diligently for months in preparation for a trial that is now just three
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`weeks away. Yet, Apple laid in wait as the parties marched towards trial and now springs this
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`
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`1
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`motion only after persuading the Court to narrow Maxell’s case. The Court should not reward
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`Apple’s tactics (or punish Maxell) with further delay. Apple’s motion for stay is a request based
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`on speculation, not unlike Apple’s first motion for a stay, and should be likewise denied.
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`As it relates to COVID-19, Apple’s motion for a continuance is not necessary. The Court
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`is plainly aware of the pandemic and has proven itself capable of making decisions that are in the
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`best interests of the public and the parties. Adequate protections are in place, and the Court has not
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`once indicated that it is not open to making special allowances to address particularized concerns.
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`Maxell is also amenable to such accommodations, both for Apple as well as its own witnesses.
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`This trial can proceed safely, and it should proceed as scheduled.
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`I.
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`Factual Background
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`Apple is able to make its request for a stay pending PTO proceedings only because, with
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`its endless resources, it has been able to take tactical advantage of PTO proceedings in light of the
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`reset trial date. Apple had twice moved to stay the case pending determination of IPRs. Apple’s
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`first motion, filed on March 24, 2020 (D.I. 239), was based on petitions for inter partes review.
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`The Court denied the motion without prejudice on April 27, 2020. In denying Apple’s request, the
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`Court held that 1) the undue prejudice that would result to Maxell from a stay “cut[] slightly against
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`a stay;” 2) “the stage of the case and Apple’s delayed filing weigh against a stay;” and 3) the
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`potential simplification of issues at the time was speculative and, as such, weighed against a stay.
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`D.I. 298 at 3, 5, 6. Apple filed its second motion on August 3, 2020 (D.I. 481) after the PTAB
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`issued institution decisions on six of Apple’s ten IPR petitions. On November 17, 2020, the Court
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`denied that motion, finding again that the factors of undue prejudice, stage of the proceedings, and
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`potential simplification of issues all weighed against a stay. D.I. 587.
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`Since Apple’s second motion to stay, trial has been twice rescheduled. The Court first reset
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`trial from October 26, 2020 to December 7, 2020 due to the effects of COVID-19 on the Court’s
`2
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`calendar. D.I. 495 (Aug. 10, 2020). Based on continuing COVID-19 concerns, the Court then reset
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`the December 7, 2020 trial to March 22, 2021. D.I. 593 (Dec. 1, 2020). It was after this second
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`rescheduling that Apple even started filing requests for ex parte review of the asserted patents.
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`Apple filed its first request on December 10, 2020—three days after trial was scheduled to begin
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`and nearly 21 months after Maxell filed this case. As of the filing of this Opposition, the PTO has
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`granted ex parte reexamination for three asserted patents. But the PTO has not issued a First Office
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`Action for any patent. The filing dates and anticipated dates for the First Office Action for each
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`are set forth in following table:
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`Asserted Patent Control No.
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`6,748,317
`
`6,580,999
`
`6,430,498
`8,339,493
`7,116,438
`
`90/014,639
`90/014,662
`90/014,640
`90/014,661
`90/014,673
`90/014,628
`90/014,678
`
`Date Request for EPR
`filed
`12/23/2020
`1/27/2021
`12/23/2020
`1/27/2021
`2/3/2021
`12/10/2020
`2/12/2021
`
`Anticipated Date of First
`Office Action1
`5/16/2021
`5/12/2021
`4/21/2021
`5/26/2021
`If review granted, 8/3/2021
`4/28/2021
`If review granted, 8/12/2021
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`As evident from this table, First Office Actions are not expected to issue for any of the asserted
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`patents prior to trial. For the single IPR proceeding on which Apple relies for its motion (for the
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`’794 patent), the Final Written Decision is not expected to issue until June 23, 2021.2 Thus, even
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`if each asserted claim is subject to reexamination (which is not a foregone conclusion), not a single
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`one will have been rejected or held invalid, even preliminarily, by the time this case goes to trial.
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`
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`Although Apple has repeatedly sought to delay adjudication, it did not previously move to
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`continue trial based on COVID-19 concerns. This case was less than a month from trial when it
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`was reset, but the closest Apple came to expressing a need for a delay due to COVID was its
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`1 These estimates are conservative. On average, it takes the Patent Office 5-7 months from filing of an EPR to
`issuance of the First Action on the Merits (“FAOM”). See Mot. at Ex. 2, p. 2 (showing 2020 statistics for “Average
`Months from Filing to FAOM”).
`2 37 CFR §42.100(c).
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`3
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`

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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 8 of 22 PageID #: 32236
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`inclusion of the following statement in the Joint Pretrial Order: “To allow each side to fully and
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`fairly present their case, Apple respectfully requests that the Court either (1) continue the trial to a
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`date when it is safe for all Apple witnesses to travel and testify live in person, or (2) allow the
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`parties to present at trial testimony of these identified witnesses via remote live testimony or a trial
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`deposition taken in advance of trial.” D.I. 546 at 43. Neither Maxell nor the Court has objected to
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`the presentation of trial testimony in one of these alternative fashions.
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`II.
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`Legal Standard
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`The Court has the inherent power to control its own docket. Landis v. N. Am. Co., 299 U.S.
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`248, 254 (1936). District courts consider three factors when determining whether to grant a stay
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`pending reexamination: (1) whether the stay will unduly prejudice the nonmoving party, (2)
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`whether the proceedings before the court have reached an advanced stage, including whether
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`discovery is complete and a trial date has been set, and (3) whether the stay will likely result in
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`simplifying the case before the court.” Fall Line Patents, LLC v. Am. Airlines Grp., No. 6:17-cv-
`
`00202-RWS, 2018 WL 4169251, at *1 (E.D. Tex. May 21, 2018) (internal citations omitted);
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`Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc., No. 2:19-cv-00225-JRG, 2021 WL 121154, at *1
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`(E.D. Tex. Jan. 13, 2021). “Trial judges have broad discretion in deciding requests for
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`continuances.” United States v. German, 486 F.3d 849, 854 (5th Cir. 2007). When evaluating
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`continuances in view of the COVID-19 Pandemic, Courts in the Eastern District of Texas have
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`looked to several factors, including without limitation: “(1) the risks posed by the pandemic and
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`available safety protocols to mitigate and reduce such risks; (2) the prejudice to parties that would
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`result from a continuance; and (3) the availability of remedial measures to address any due process
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`concerns.” Blitzsafe Texas LLC v. Maserati North America Inc., et al., No. 2:19-cv-00378, Dkt.
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`No. 258 (E.D. Tex. Feb. 16, 2021) (citing Optis Wireless Tech., LLC v. Apple Inc., No. 2:19-cv-
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`4
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`00066, Dkt. 387 (E.D. Tex. July 21, 2020); Image Processing Techs., LLC v. Samsung Elecs. Co.,
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`No. 2:20-cv00050, Dkt. 200 (E.D. Tex. June 29, 2020)).
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`III. Analysis
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`This case is ready for trial. Each factor the Court evaluates when considering whether to
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`grant a stay in view of reexamination weighs against a stay here. Moreover, the Court has adequate
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`precautions in place, including the availability of alternative measures where appropriate, such that
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`a continuance is not warranted.
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`A.
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`Prejudice, Stage of the Proceedings, and Potential Simplification Each Weigh
`Against A Stay Pending Post-Grant Proceedings
`1.
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`The Prejudice Factor Weighs Against Stay
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`The Court has twice found that a stay pending post-grant proceedings would prejudice
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`Maxell. D.I. 298 at 3; D.I. 587 at 3. That is even more so now that Maxell has been compelled by
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`the Court to significantly narrow its case for trial. Apple contends it is appropriate to disturb those
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`prior holdings because they “came at a time when a minority of the asserted claims were subject
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`to post-grant review at the PTO.” Mot. at 7. But the Court’s ruling on the prejudice factor had
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`nothing to do with the number of asserted claims subject to pending review. It was based on the
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`prejudice to Maxell from “a substantial delay of an imminent trial date.” D.I. 298 at 3 (citing
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`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-cv-213-JRG-RSP, 2015 WL
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`627887, at *2 (E.D. Tex. Jan. 29, 2015)). Moreover, the current narrowed state of Maxell’s case
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`is the result of Apple’s own requests to the Court at which time it was fully aware it would
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`subsequently request this stay/continuance. Regardless of the number of asserted claims that may
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`be subject to post-grant review, the simple fact remains true: “Maxell has an interest in the timely
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`enforcement of its patent rights.” Id. (citing Realtime Data LLC v. Actian Corporation, No. 6:15-
`
`cv-463-RWS-JDL, 2016 WL 3277259, at *2 (E.D. Tex. June 14, 2016); NFC Techs. LLC v. HTC
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`5
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`Am., Inc., Case No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015)).
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`In rendering its prior holdings, the Court did consider and acknowledge that “the time
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`allowed for the IPR decision as well as a potential appeal could cause a lengthy delay that would
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`significantly prejudice Maxell.” Id. (citing Realtime Data, 2016 WL 3277259, at *2). If anything,
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`Apple’s current reliance on EPR proceedings exacerbates the potential for a lengthy delay. The
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`reexaminations could snake through the PTO for roughly two years before reaching a final
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`resolution,3 and that does not take into account appeals. In 2020, the median time to disposition
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`for Federal Circuit appeals from the PTO was 14.0 months. Ex. A (Median Time to Disposition).4
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`That is to say, if this case is stayed pending final resolution of all reexamination proceedings, this
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`case may not resume until 2024 and Apple will have successfully avoided a fair trial for three years
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`beyond the currently (re)scheduled trial date. And that assumes that Apple does not file additional
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`requests for ex parte reexamination as a basis to further draw out the stay. Given Apple’s
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`determination to postpone trial by any means possible, such continued filings are more certain than
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`the speculative claims in Apple’s motion.
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`Apple also asserts that a stay will avoid prejudice associated with the risk of wasted
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`resources in the event asserted claims are cancelled or modified, citing to Ramot, 2021 WL 121154,
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`at *2. As an initial matter, this factor looks at “whether the stay will unduly prejudice the
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`nonmoving party,” not the prejudice that may result from denying the stay. Fall Line Patents, 2018
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`WL 4169251, at *1. More importantly, the Court in Ramot rejected this argument where, as here,
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`no office action had issued on all asserted claims heading to trial. Specifically, the defendant in
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`Ramot twice moved for a stay pending EPRs. At the time of the first filing, the PTO had granted
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`3 See Apple Mot. at Ex. 5, Ex Parte Reexamination Filing Data – September 30, 2019 (stating the average overall
`reexamination pendency is 25.8 months).
`4 http://www.cafc.uscourts.gov/sites/default/files/the-court/statistics/06_Med_Disp_Time_MERITS_table.pdf.
`6
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`requests for reexamination on all three asserted patents but had issued First Office Actions on only
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`two of the three asserted patents. Ex. B, Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc., No. 2:19-
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`cv-00225-JRG, Dkt. 205, at 2 (E.D. Tex. Nov. 23, 2020). The Court denied that motion, notably
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`holding that “[g]ranting a stay would prejudice Ramot, the nonmoving party, by delaying its
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`resolution of the case.” Id. at 3 (citing Soverain Software LLC v. Amazon.com, Inc., 356 F.Supp.2d
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`660, 662 (E.D. Tex. 2005)). More to the point, the Court held that, “[g]iven the resources that the
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`parties and the Court have already invested in this case, staying the case, based solely on
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`speculation of what might possibly happen during reexamination, would be inefficient and
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`inappropriate.” Id. at 4 (citing Soverain, 356 F.Supp.2d at 663). Apple’s motion is much more
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`speculative because, here, no office action has issued against any asserted claim.
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`Finally, Apple reasserts for a third time its arguments that prejudice to Maxell is
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`undermined because Maxell does not compete with Apple and based on the timing of Maxell’s
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`filing of this lawsuit. Mot. at 8-9; see also Apple Inc.’s Motion to Stay Pending Determination of
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`IPR of the Patents-in-Suit, D.I. 239 at 3-4; Apple Inc.’s Renewed Motion to Stay Pending
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`Determination of IPR of the Patents-in-Suit, D.I. 481 at 12-14. Both of these issues were fully
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`briefed when the Court previously found the prejudice factor to weigh against a stay. Indeed, the
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`Court explicitly rejected Apple’s competition argument: “The mere fact that [Maxell] is not
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`currently practicing the patents does not mean that, as a matter of law, it is not prejudiced by a
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`substantial delay of an imminent trial date.”5 D.I. 298 at 3 (citing Rembrandt, 2015 WL 627887,
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`at *2). With respect to the timing point, as Maxell previously explained in connection with Apple’s
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`prior motions, there was no “delay” by Maxell in pursuing its rights. See, e.g., Dkt. 504 at 6-7.
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`That Maxell first sought resolution through friendly negotiations does not diminish the prejudice
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`5 As Maxell explained in its Opposition to Apple’s first 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.
`7
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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 12 of 22 PageID #: 32240
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`it will now suffer through delay. Id. Maxell’s efforts do not open the door for Apple to delay
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`resolution of these issues by three additional years. And, Apple is certainly aware of the prejudice
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`to Maxell from Apple’s conduct. Apple spent the last 3 months feigning as though it intended to
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`proceed to trial. To ask for a stay or continuance now—after persuading the Court to significantly
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`narrow Maxell’s case—screams of gamesmanship.
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`Lastly, Apple’s contention that Maxell was required to provide a declaration to show
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`prejudice ignores the Court’s prior findings, the public (and obvious) nature of the prejudice to
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`Maxell, and scores of cases finding prejudice without a declaration by the non-movant. Ultimately,
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`Apple presents no new facts or arguments that should change the Court’s prior finding on this
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`factor. Now, as twice before, the prejudice to Maxell cuts against a stay.
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`2.
`
`The Stage of the Proceedings Weighs Strongly Against Stay
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`Even when Apple filed its motion for stay before expert discovery was complete—long
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`before the eve of trial—the Court held that this factor weighed against a stay. D.I. 298 at 4 (“The
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`case is not in its infancy and is far enough along that a stay would interfere with ongoing
`
`proceedings.”) (citing Uniloc 2017 LLC v. Samsung Elec. Am., Inc., NO. 2:19-cv-00259-JRG-
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`RSP, 2020 WL 143360, at *5 (E.D. Tex. Mar. 24, 2020); NFC Techs., 2015 WL 1069111, at *4).
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`In denying Apple’s second motion, filed after expert discovery but prior to argument on summary
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`judgment, the Court held that “the fact that proceedings have advanced even further since the
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`Court’s order and both the parties and the Court have expended significant resources in the
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`progress of this case weighs more heavily against a stay than before.” D.I. 587 at 4. Now, the Court
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`has decided summary judgment and Daubert motions, already held a pretrial conference, and even
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`ruled on motions in limine. The Court has also compelled Maxell to significantly narrow its case
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`at Apple’s urging. There is little left to be done other than proceed to trial. Though Apple asserts
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`that the resources that go into trial are enough to favor a stay, this Court has already twice rejected
`8
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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 13 of 22 PageID #: 32241
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`the argument. D.I. 298 at 4; D.I. 587 at 304.
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`When a stay is considered in view of IPRs, the Court also considers “whether the movant
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`has unreasonably delayed filing its IPR petition and motion to stay.” D.I. 298 at 4 (citing Stragent,
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`LLC v. BMW of N. Am., LLC, No. 6:16-cv-446-RWS-KNM, 2017 WL 2839260, at *2 (E.D. Tex.
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`Apr. 20, 2017)). In considering this factor, the Court has already held that Apple’s delay in filing
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`its IPRs weighed against a stay and that Apple provided no sufficient explanation for such delay.
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`See D.I. 587 at 4-5. To the extent this factor is also considered in connection with filing requests
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`for EPRs, it weighs even more heavily against Apple. Apple waited roughly 21 months to start
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`filing EPR requests on the asserted patents, and did not file even its first EPR request until after
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`trial was supposed to begin. And Apple filed those requests based almost entirely on prior art
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`that was either in its prior IPR petitions (filed December 2019 – March 2020), its invalidity
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`contentions (served August 2019), or third party IPRs from prior to this litigation. There is no
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`possible explanation for this delay other than to support the filing of this very motion. This tactic
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`cannot be condoned. Requests for ex parte reexaminations are granted over 90% of the time. Mot.
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`at Ex. 5, Ex Parte Reexamination Filing Data – September 30, 2019. When EPR requests are filed
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`by a third-party—like here—all claims are only canceled at a mere rate of 14%. Id. Thus, there is
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`an 86% chance that some claims from each ex parte reexamination will survive these serial
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`invalidity attacks by Apple. In view of these statistics, to grant Apple a stay based on the grant of
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`a reexamination would be to permit almost any defendant the option to delay trial at the last minute
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`while only having a 14% chance of succeeding in obtaining cancellation of all claims.
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`Considering in particular the timing of Apple’s EPR requests, this factor weighs heavily
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`against a stay.
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`3.
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`The Potential Simplification of the Case is Speculative and Thus
`Weighs Against Stay
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`Case 5:19-cv-00036-RWS Document 636 Filed 03/01/21 Page 14 of 22 PageID #: 32242
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`For five of the six asserted patents, Apple’s motion rests upon the grant or anticipated grant
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`of ex parte reexamination. But the mere grant of reexamination does not indicate that the case will
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`be simplified, or that Maxell’s claims will be altered such that trial will be nothing but a waste of
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`resources. As discussed above, when faced with a scenario where the PTO had granted ex parte
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`reexamination on all three asserted patents, but issued Office Actions rejecting the challenged
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`claims on only two of the three asserted patents, the Court in Ramot held:
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`Nevertheless, a stay has the potential to simplify the issues in questions and the trial
`of the case; however, such potential for simplification will be more certain in time.
`Of the eight currently-asserted claims, six have been rejected. These rejections,
`however, are only preliminary; should they become final, the case may become
`greatly simplified. Also, no decision as of yet has been made as to the two claims
`asserted from the ’535 Patent. Only time will tell whether any of the eight asserted
`claims will remain, uncancelled and unmodified, after the reexamination procedure.
`Therefore, while the ex parte reexams have the potential to simplify the issues in
`question and the trial of this case, such simplification is currently more
`speculative than factual.
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`Ex. B, Ramot, No. 2:19-cv-00225-JRG, Dkt. 205, at 3-4 (emphases added). The Court held that,
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`“[g]iven the resources that the parties and the Court have already invested in this case, staying the
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`case, based solely on speculation of what might possibly happen during reexamination, would be
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`inefficient and inappropriate.” Id. at 4 (citing Soverain, 356 F.Supp.2d at 663). It was only after
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`the PTO issued office actions rejecting all asserted claims of all asserted patents that the Court
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`held that “the reexams … progressed past the point of speculation” such that “simplification of the
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`issues to be tried pending the resolution of the reexams is near certain.” Ramot, 2021 WL 121154,
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`at *2. And only then did the Court deem the totality of the circumstances to warrant a stay. Id.
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`In AGIS Software Dev. LLC v. Google LLC, No. 2:19-cv-00361-JRG, 2021 WL 465424
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`(E.D. Tex. Feb. 9, 2021), the Court granted a stay where less than all asserted claims were subject
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`to an Office Action. But there were other facts present that contributed to the likelihood that the
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`EPRs would streamline the litigation. For example, all of the EPR grant orders, and each issued
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`Office Action, significantly changed the priority date of the asserted patents and stated that the
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`parent patent to those asserted anticipated and rendered obvious the asserted claims. Id. at *2. To
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`that end, the Court stated, “[h]aving considered the factors outlined above and the specific facts
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`and circumstances of this case, the Court is persuaded that the benefits of a stay outweigh the
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`costs of postponing resolution of the litigation in this particular case.” Id. at *3 (emphasis added).
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`The specific facts of the AGIS case are not akin to those here. Simply put, Apple has not presented
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`any arguments that take this case out of the speculative realm to where simplification is a certainty.
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`A denial of stay is also in line with other cases in this District. For example, in KIPB LLC
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`v. Samsung Electronics Co., Ltd., Case No. 2:19-cv-00056-JRG-RSP, 2019 WL 6173365 (E.D.
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`Tex. Nov. 20, 2019), the Court denied a motion for stay even where the PTO had issued a final
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`office action rejecting all asserted claims. Id. at *1. Even though that reexamination had proceeded
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`far beyond Apple’s here, the Court held “that the outcome of any PTAB appeal is far from clear
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`at this time and that it would be improper for the Court to speculate as to the result of that appeal
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`at this stage.” Id. at *2 (further noting that the conclusion is consistent with decisions reached by
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`other courts within this District). In reaching its holding, the Court also considered the fact that
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`“the most recent ex parte reexamination statistics show[] that all claims were confirmed in 21% of
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`reexamination certificates.” Id. That same percentage is reflected in the statistics Apple set forth
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`in its Motion at Exhibit 5.
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`Although the foregoing discussion of cases appears to reveal a split in decisions about the
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`weight that should be given First, or even Final, Office Actions in EPR proceedings, the cases
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`across the board support a holding that stays are not appropriate prior to any office actions,
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`particularly where there are not additional indicia of invalidity at play. Apple had no choice but to
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`rush to file its motion given the quickly approaching trial date. But as a result, it simply does not
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`have the necessary support to back up its request. The potential for simplification is purely
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`speculative and speculation cannot override the strong weight against a stay that is presented by
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`the stage of this proceeding. There is no basis to stay this case.
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`B.
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`Trial Should Not Be Continued in View of COVID-19
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`In the alternative to stay, Apple requests that the trial “should be continued until later this
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`year so that all participants who want one can get a COVID-19 vaccine.” Although Apple asserts
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`the continuance would be just until later this year, it is actually indefinite in term. As an initial
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`matter, nobody can predict when “all participants who want one” can get a vaccine. The
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`availability of the vaccine is locality dependent. Furthermore, as is clear from the fact that Apple
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`has already moved three times for a stay pending reexamination proceedings before the PTO, it is
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`obvious that it will try to use any continuance as an opportunity to, yet again, seek a stay.
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`Far from justifying an indefinite continuance, the improved and improving COVID-19
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`environment supports proceeding with the trial as scheduled. The parties have worked to
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`significantly narrow this case from what was originally intended to be presented at trial, based on
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`the Court’s request after urging by Apple.
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`1.
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`Apple’s Presentation of the COVID-19 Statistics Are Misleading
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`Apple’s assertion that COVID-19 cases and deaths are substantially higher now than in
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`November 2020 rests on a misleading read of the metrics. It is true that the total number of cases
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`and deaths has risen in