Case 5:19-cv-00036-RWS Document 636-3 Filed 03/01/21 Page 1 of 5 PageID #: 32255
`Case 5:19-cv-00036—RWS Document 636-3 Filed 03/01/21 Page 1 of 5 PageID #: 32255
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`EXHIBIT B
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`EXHIBIT B
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`Case 2:19-cv-00225-JRG Document 205 Filed 11/23/20 Page 1 of 4 PageID #: 7494Case 5:19-cv-00036-RWS Document 636-3 Filed 03/01/21 Page 2 of 5 PageID #: 32256
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ORDER
`Before the Court is Defendant Cisco Systems, Inc.’s (“Cisco”) Motion to Stay Pending Ex
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`CIVIL ACTION NO. 2:19-CV-00225-JRG
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`RAMOT AT TEL AVIV UNIVERSITY
`LTD.,
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`v.
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`CISCO SYSTEMS, INC.,
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`Plaintiff,
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`Defendant.
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`Parte Reexamination of U.S. Patent No. 10,270,535, No. 10,033,465, and No. 10,461,866 (the
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`“Motion”). (Dkt. No. 107.) On November 19, 2020, the Court held a Status Conference on the
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`Motion and related briefing. Having considered the Motion, the related briefing, the arguments
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`presented, and the relevant authority, the Court is of the opinion that the Motion should be and
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`hereby is DENIED WITHOUT PREJUDICE for the reasons herein.
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`I.
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`BACKGROUND
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`Plaintiff Ramot at Tel Aviv University Ltd. (“Ramot”) alleges Defendant Cisco Systems,
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`Inc. (“Cisco”) infringes U.S. Patent No. 10,270,535 (the “’535 Patent”); U.S. Patent
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`No. 10,033,465 (the “’465 Patent”); and U.S. Patent No. 10,461,866 (the “’866 Patent”). (Dkt.
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`No. 48.)
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`Cisco previously filed an Opposed Motion to Stay Pending Inter Partes Review of U.S.
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`Patent No. 10,270,535 and No. 10,033,465 (the “Motion to Stay Pending IPR”). (Dkt. No. 36.)
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`The Court denied the Motion to Stay Pending IPR without prejudice, noting that no decision on
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`institution of the inter partes reviews (“IPRs”) had yet been made, and instructing Cisco that it
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`could subsequently seek a stay “if and when IPR proceedings are instituted by the PTAB.” (Dkt.
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`No. 54.)
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`The Patent Trials and Appeal Board (“PTAB”) subsequently denied institution of the IPRs,
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`and Cisco filed Requests for Ex Parte Reexamination on all three patents-in-suit. (Dkt. No. 107.)
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`The United States Patent and Trademark Office (“PTO”) found substantial new questions of
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`patentability as to each of the asserted claims in the patents-in-suit, granting all Requests for
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`Reexamination, and Cisco filed the present Motion. (Id.) Subsequently, the PTO issued Office
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`Actions rejecting all challenged claims of the ’465 and ’866 Patents. (Dkt. Nos. 171, 180.) The
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`PTO has not yet made an initial determination as to the ’535 Patent. (See 11/19/2020 Status
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`Conference Tr.)
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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, including the power to stay
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`proceedings. Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). “In deciding whether to stay
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`litigation pending reexamination, courts typically consider: (1) whether a stay will unduly
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`prejudice or present a clear tactical disadvantage to the nonmoving party, (2) whether a stay will
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`simplify the issues in question and trial of the case, and (3) whether discovery is complete and
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`whether a trial date has been set.” Soverain Software LLC v. Amazon.com, Inc., 356 F.Supp.2d
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`660, 662 (E.D. Tex. 2005) (citing Xerox Corp. v. 3Com Corp., 69 F.Supp.2d 404, 406
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`(W.D.N.Y. 1999)).
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`III. ANALYSIS
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`Cisco requests a stay pending resolution of the ex parte reexams, arguing that (1) such a
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`stay would not prejudice Ramot because it does not compete with Cisco, does not practice the
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`asserted patents, and can be adequately compensated through monetary damages for any alleged
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`infringement; (2) a stay would avoid duplicative litigation because the PTO found substantial new
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`questions of patentability exist as to each asserted claim in the present action; and (3) the stage of
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`the case favors a stay because Cisco immediately filed the present motion when the PTO denied
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`institution on its IPRs but granted its reexam requests. (Dkt. No. 107.)
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`Ramot opposes a stay, arguing that Cisco merely refiled its inter partes review petitions as
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`ex parte reexaminations, and now re-files its motion for a prejudicial stay. (Dkt. No. 110.)
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`Specifically, Ramot argues that (1) a stay would prejudice Ramot because this case has been
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`pending for a lengthy time and ex parte reexams generally remain pending for over two years; (2)
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`any issue simplification is speculative because the claims could survive unscathed or be modified
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`without colorable differences with respect to infringement; and (3) the proceedings are in late
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`stages, with discovery complete and trial impending. (Id.)
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`Granting a stay would prejudice Ramot, the nonmoving party, by delaying its resolution of
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`the case. Soverain, 356 F.Supp.2d at 662. Ramot “has an interest in timely enforcing its patents.
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`This remains true regardless [of] whether the parties’ products directly compete,” or whether
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`Ramot currently practices the patents. ThinkOptics, Inc. v. Nintendo of America, Inc., 2014 WL
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`4477400, at *1 (E.D. Tex. Feb. 27, 2014).
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`Nevertheless, a stay has the potential to simplify the issues in questions and the trial of the
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`case; however, such potential for simplification will be more certain in time. Soverain, 356
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`F.Supp.2d at 662. Of the eight currently-asserted claims, six have been rejected. (Dkt. Nos. 171,
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`180.) These rejections, however, are only preliminary; should they become final, the case may
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`become greatly simplified. Also, no decision as of yet has been made as to the two claims asserted
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`from the ’535 Patent. Only time will tell whether any of the eight asserted claims will remain,
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`uncancelled and unmodified, after the reexamination procedure. Therefore, while the ex parte
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`reexams have the potential to simplify the issues in question and the trial of this case, such
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`simplification is currently more speculative than factual.
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`The late stage of the trial of this case weighs against a stay. Discovery is complete and a
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`trial date has been set. Soverain, 356 F.Supp.2d at 662. “Given the resources that the parties and
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`the Court have already invested in this case, staying the case, based solely on speculation of what
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`might possibly happen during reexamination, would be inefficient and inappropriate.” Soverain,
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`356 F.Supp.2d at 663.
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`Having considered the prejudice to Ramot, the speculative nature of any simplification of
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`issues, and the late stage of case development, the Court finds that the factors weigh against
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`granting a stay at this juncture. Nevertheless, this denial is without prejudice, and Cisco may refile
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`its Motion when more is known definitively.
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`IV. CONCLUSION
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`In light of the foregoing, the Court finds that Cisco’s Motion to Stay Pending Ex Parte
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`Reexamination of U.S. Patent No. 10,270,535, No. 10,033,465, and No. 10,461,866 (Dkt. No. 107)
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`should be and hereby is DENIED WITHOUT PREJUDICE.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 23rd day of November, 2020.
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