Case 6:12-cv-00799-JRG Document 107 Filed 02/07/14 Page 1 of 20 PageID #: 2709
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`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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` Case No. 12-CV-00799-LED
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`INVENSYS SYSTEMS, INC.,
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`Plaintiff,
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`vs.
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants,
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`and
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`MICRO MOTION INC., USA,
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`Counterclaim-Plaintiff,
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`vs.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`MICRO MOTION, INC.’S AND EMERSON ELECTRIC CO.’S
`MOTION TO STAY PENDING INTER PARTES REVIEW
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`4852-6380-1366.4
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`

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`Case 6:12-cv-00799-JRG Document 107 Filed 02/07/14 Page 2 of 20 PageID #: 2710
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`
`TABLE OF CONTENTS
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`I. 
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`II. 
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`III. 
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`IV. 
`
`
`INTRODUCTION .............................................................................................................. 1 
`
`BACKGROUND FACTS ................................................................................................... 3 
`A. 
`Litigation Proceedings ............................................................................................ 3 
`Inter Partes Review Proceedings............................................................................ 4 
`B. 
`C. 
`Micro Motion’s IPR Petitions Are Likely To Be Granted ...................................... 6 
`
`ARGUMENT ...................................................................................................................... 6 
`A. 
`The Court Is Within Its Discretion To Grant A Stay .............................................. 6 
`B. 
`Invensys Will Not Suffer Undue Prejudice From A Stay ....................................... 8 
`C. 
`The IPR Proceedings Will Simplify The Issues ..................................................... 9 
`D. 
`The Current Posture Of This Case Favors A Stay ................................................ 11 
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`CONCLUSION ................................................................................................................. 13 
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`Case 6:12-cv-00799-JRG Document 107 Filed 02/07/14 Page 3 of 20 PageID #: 2711
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`
`TABLE OF AUTHORITIES
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`Page(s)
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`
`
`Cases
`
`Akeena Solar, Inc. v. Zep Solar Inc.,
`No. C 09-05040 JSW, 2010 U.S. Dist. LEXIS 47909 (N.D. Cal. Apr. 14,
`2010) ........................................................................................................................................12
`
`Black & Decker, Inc. v. Positec USA, Inc.,
`No. 13 C 3075, 2013 U.S. Dist. LEXIS 153795 (N.D. Ill. Oct. 1, 2013) ..................................7
`
`Cameras Onsite, LLC v. Digital Management Solutions, Inc.,
`No. H-09-2518, 2010 U.S. Dist. LEXIS 28648 (S.D. Tex. Mar. 24, 2010) ........................8, 10
`
`Capriola Corp. v. LaRose Indus. LLC,
`No. 8:12-cv-2346-T-23TBM, 2013 U.S. Dist. LEXIS 65754 (M.D. Fla. Mar.
`11, 2013) ..................................................................................................................................12
`
`Datatreasury Corp. v. Wells Fargo & Co.,
`490 F. Supp. 2d 749 (E.D. Tex. 2006) .......................................................................................7
`
`e-Watch, Inc. v. Lorex Can., Inc.,
`No. H-12-3314, 2013 U.S. Dist. LEXIS 138198 (S.D. Tex. Sept. 26, 2013) ..................7, 9, 10
`
`Emtel, Inc. v. Lipidlabs, Inc.,
`No. H-07-1798, 2013 U.S. Dist. LEXIS 56312 (S.D. Tex. Apr. 19, 2013) ...................7, 10, 12
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988)..................................................................................................6
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`No. IPR2012-00001, Paper No. 15 (PTAB Jan. 9, 2013) ........................................................10
`
`Geospan Corp. v. Pictometry Int’l Corp.,
`No. 08-816 ADM/JSM, 2012 U.S. Dist. LEXIS 168802 (D. Minn. Nov. 28,
`2012) ........................................................................................................................................11
`
`Hill-Rom Servs. v. Stryker Corp.,
`No. 1:11-cv-1120-JMS-DKL, 2012 U.S. Dist. LEXIS 165470 (S.D. Ind. Nov.
`20, 2012) ................................................................................................................................8, 9
`
`j2 Global Commc’ns., Inc. v. Venali, Inc.,
`No. 04-cv-1172 DDP, 2009 U.S. Dist. LEXIS 131309 (C.D. Cal. Apr. 23,
`2009) ..........................................................................................................................................3
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`4852-6380-1366.4
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`ii
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`

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`Case 6:12-cv-00799-JRG Document 107 Filed 02/07/14 Page 4 of 20 PageID #: 2712
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`Microlinc, LLC v. Intel Corp.,
`No. 07-cv-488, 2010 U.S. Dist. LEXIS 99255 (E.D. Tex., Sept. 20, 2010) ............................12
`
`Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA, Inc.,
`No. 6:11-cv-0492-LED-JDL, Dkt. No. 410 (E.D. Tex. filed Mar. 5, 2013) ..............................7
`
`Patlex Corp. v. Mossinghoff,
`758 F.2d 594 (Fed. Cir. 1985)....................................................................................................9
`
`Semiconductor Energy Lab. Co. v. Chimei Innolux Corp.,
`No. SACV 12-21-JST, 2012 U.S. Dist. LEXIS 186322 (C.D. Cal. Dec. 19,
`2012) ......................................................................................................................................7, 8
`
`Software Rights Archive, LLC v. Facebook, Inc.,
`Nos. C-12-3970 RMW, C-12-3971 RMW, C-12-3972, 2013 U.S. Dist. LEXIS
`133707 (N.D. Cal. Sept. 17, 2013) ............................................................................................8
`
`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) ...................................................................................6, 7
`
`SSL Servs., LLC v. Citrix Sys.,
`No. 2:08-cv-158-JRG, 2012 U.S. Dist. LEXIS 35779 (E.D. Tex. Mar. 16,
`2012) ..........................................................................................................................................6
`
`Tierravision, Inc. v. Google, Inc.,
`No. 11-cv-2170, 2012 U.S. Dist. LEXIS 21463 (S.D. Cal. Feb. 21, 2012) .............................12
`
`Universal Remote Control, Inc. v. Universal Elecs., Inc.,
`No. IPR2013-00152, Paper No. 8 (PTAB Aug. 19, 2013) ......................................................11
`
`Statutes
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`35 U.S.C § 252 ...............................................................................................................................10
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`35 U.S.C. § 311 ................................................................................................................................1
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`35 U.S.C. §§ 311-19 ........................................................................................................................1
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`35 U.S.C. § 313 ................................................................................................................................5
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`35 U.S.C. § 314(a) ...........................................................................................................................6
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`35 U.S.C. § 314(b) ...........................................................................................................................5
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`35 U.S.C. § 315(e) .........................................................................................................................10
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`35 U.S.C. § 315(e)(2) ...................................................................................................................2, 8
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`35 U.S.C. § 316(a)(11) .................................................................................................................5, 8
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`4852-6380-1366.4
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`iii
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`Other Authorities
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`37 C.F.R. § 42.100(b) ....................................................................................................................10
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`4852-6380-1366.4
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`iv
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`This case is well-positioned for a stay. The litigation is still in its early stages,
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`and the parties and the Court would benefit from postponing this case while the Patent Trials and
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`Appeals Board (“PTAB”) of the United States Patent and Trademark Office (“PTO”) resolves
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`the invalidity challenges raised by Defendant and Counterclaim-Plaintiff Micro Motion, Inc.
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`(“Micro Motion”) against the Invensys patents-in-suit1 in the inter partes review (“IPR”)
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`proceedings currently pending in the PTO. Thus, Micro Motion and Defendant Emerson Electric
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`Co. (“Emerson”)2 hereby move to stay this action pending the conclusion of the IPR
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`proceedings. The requested stay is of limited duration, will not prejudice Invensys, and will
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`simplify the issues in the case. Plaintiff and Counterclaim-Defendant Invensys Systems, Inc.
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`(“Invensys”) opposes this motion.
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`I.
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`INTRODUCTION
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`Micro Motion has filed petitions for IPR for the seven asserted Invensys patents
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`in this case. These petitions, authorized by the Leahy-Smith America Invents Act, allow the
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`PTAB to evaluate the validity of these patents on the basis of prior art. See generally 35 U.S.C.
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`§§ 311-19. If the PTAB grants review and concludes the patent are invalid, the patents are
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`cancelled, and any infringement litigation against Micro Motion and Emerson becomes moot.
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`See 35 U.S.C. § 311. In the event the invalidity challenges are not successful, Micro Motion and
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`
`1 “The Invensys patents-in-suit” or “Invensys patents” refer to U.S. Patent Nos. 7,124,646
`(“the ’646 patent”), 7,136,761 (“the ’761 patent”), 6,311,136 (“the ’136 patent”), 7,505,854 (“the
`’854 patent”), 6,754,594 (“the ’594 patent”), 7,571,062 (“the ’062 patent”), and 8,000,906 (“the
`’906 patent”).
`
`2 As explained in its motion for summary judgment of non-infringement, which is
`pending before the Court, Emerson does not manufacture, use, sell, offer to sell, repair, or import
`the accused Micro Motion Coriolis flowmeters and seeks dismissal from this case. (Dkt. No.
`83.)
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`Emerson are estopped from asserted invalidity, on the same grounds, in the subsequent litigation.
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`See 35 U.S.C. § 315(e)(2).
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`The Court should grant a stay pending resolution of the IPR proceedings. Each of
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`the relevant factors in deciding whether a stay is warranted weighs strongly in favor of a stay.
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`First, Invensys would not be unduly prejudiced. Invensys waited nearly six years
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`to bring this action. It can hardly complain about a modest stay of no more than 18 months while
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`the PTAB assesses the invalidity of its patents, particularly when it will have the opportunity to
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`participate (and even accelerate) the IPR proceedings.
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`Second, a stay will streamline the case. The IPR proceedings will prevent the
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`parties and the Court from having to spend time and resources on patents and issues that may be
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`rendered moot by the PTAB’s review. For example, the number of asserted claims may be
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`narrowed, fewer claim terms may require construction, and/or Micro Motion and Emerson will
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`be estopped from raising certain prior art references at trial.
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`Finally, given the current posture of the case, it is appropriate to issue an order
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`staying this action. Discovery, including electronic discovery, is not yet complete. No
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`depositions have been taken. Expert reports have not been served. The parties have not
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`submitted any claim construction briefing, and the Markman hearing is not until May 1, 2014.
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`Trial is more than 20 months away. There is a considerable amount of work left to be done in
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`this matter, all of which will be impacted by the outcome of the IPR proceedings.
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`On balance, a stay of this litigation is warranted. Micro Motion and Emerson
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`respectfully request that the Court grant their motion.
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`II.
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`BACKGROUND FACTS
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`A. Litigation Proceedings
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`Invensys filed suit against Micro Motion and Emerson on October 22, 2012,
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`alleging infringement of the ’646, ’761, ’136, and ’854 patents. (Dkt. No. 1.) On January 31,
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`2013, Invensys subsequently amended its complaint to add allegations of infringement of the
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`’594, ’062, and ’906 patents. (Dkt. No. 25.) Invensys alleges that certain of Micro Motion’s
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`Coriolis flowmeters, i.e., those flowmeters that contain an enhanced core processor, infringe its
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`patents. Micro Motion and Emerson deny infringement and contest the validity and
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`enforceability of the Invensys patents.3 (Dkt. Nos. 27, 71.)
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`Although this suit was filed more than a year ago, this case has not progressed
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`passed the preliminary stages. Fact discovery is on-going, with a July 16, 2014 deadline for
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`completion. (Dkt. No. 103.) Significant discovery must still be taken. Notwithstanding the
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`December 2, 2013 deadline for the substantial completion of document production, Invensys has
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`not completed its production.4 The parties have exchanged some written discovery and
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`3 Micro Motion also counterclaimed that Invensys infringed U.S. Patent Nos. 5,555,190
`and 6,505,131 (“the Micro Motion patents”). (Dkt. No. 71.) The Micro Motion patents are
`similarly drawn to technology used in Coriolis flowmeters, but are otherwise unrelated to the
`Invensys patents-in-suit. While the Micro Motion patents are not impacted by the IPR
`proceedings, Micro Motion is willing to stay its counterclaims against Invensys during the
`pendency of the PTO proceedings. The Court, in its discretion, can order such a stay. See j2
`Global Commc’ns., Inc. v. Venali, Inc., No. 04-cv-1172 DDP (AJWx), 2009 U.S. Dist. LEXIS
`131309 (C.D. Cal. Apr. 23, 2009) (ordering a stay when PTO proceedings cover fewer than all
`patents at issue in a litigation, noting that a stay would be beneficial so that all the patents could
`be construed and litigated at the same time).
`
`4 Invensys has failed to produce many categories of relevant documents relating to the
`purported inventions claimed in the Invensys patents-in-suit, contending that these documents
`are not in its possession, custody, or control, but in the possession, custody, or control of Oxford
`University (“Oxford”). Because Oxford is located overseas in the United Kingdom and not a
`party to this case, Invensys insists that Micro Motion must use the discovery procedures outlined
`in the Hague Convention for Taking Evidence Abroad, likely because these procedures are time-
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`exchanges responses, but additional written discovery is likely. No depositions have taken place
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`despite the fact that Micro Motion has noticed 12 Invensys fact witnesses and served a 30(b)(6)
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`deposition notice; Invensys has not served any deposition notices. Limited third-party discovery
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`has been taken thus far. Electronic discovery has not been addressed.
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`The parties have exchanged preliminary infringement and invalidity contentions
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`consistent with P. R. 3-1 through 3-4 and made their respective preliminary identification of
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`asserted claims. (Dkt. Nos. 46, 49, 72, 73, 90, 93.) The parties have also only recently
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`exchanged their preliminary claim constructions and intrinsic and extrinsic evidence in
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`compliance with P. R. 4.2, filing the Joint Claim Construction and Prehearing Statement on
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`January 31, 2014. (Dkt. No. 105.) The Markman hearing is scheduled for May 1, 2014. (Dkt.
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`No. 103.)
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`Summary judgment deadlines are not until January 16, 2015. (Id.) Pretrial
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`submissions are due in July and August 2015. (Id.) Trial is more than 1.5 years away, set to
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`begin on October 13, 2015. (Id.)
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`B. Inter Partes Review Proceedings
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`Micro Motion timely petitioned the PTAB for IPR of the ’646, ’761, ’136, and
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`’854 patents on November 19, 2013, seeking cancellation of certain claims based on several prior
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`art references. (Declaration of Kadie M. Jelenchick (“Jelenchick Decl.”), Exs. A-D.) The IPR
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`references Micro Motion is relying on includes fourteen of the patent and prior art references
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`cited in its Invalidity Contentions. (See Jelenchick Decl., Ex. E.) Each IPR petition was
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`consuming and expensive. Micro Motion disputes that Invensys does not have access to these
`materials given Invensys’s relationship with Oxford and the Invensys University Technology
`Centre for Advanced Instrumentation at Oxford, where the inventions were purportedly
`conceived. Nevertheless, Micro Motion intends to pursue these materials through the Hague
`Convention.
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`accorded a notice date of November 19, 2013. (See Jelenchick Decl., Exs. F-I.) Invensys has
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`until February 19, 2014, to file optional preliminary responses to the petitions. See 35 U.S.C.
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`§ 313. As soon as Invensys files its preliminary responses or the deadline passes without a
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`response, the PTAB is statutorily required to grant or deny the petitions within three months of
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`that date – i.e., no later than May 19, 2014. See 35 U.S.C. § 314(b). Invensys may notify the
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`PTAB if it does not intend to file an optional preliminary response, which would advance the
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`date of required action by the PTAB. To date, Invensys has neither filed a response nor
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`indicated whether it will forgo a response. As a result, as of May 19, 2014, the parties will know
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`whether the IPR proceedings with respect to the ’646, ’761, ’136, and ’854 patents have been
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`instituted.
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`Micro Motion has also filed IPR petitions challenging the validity of the
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`remaining three Invensys patents – the ’594 patent (filed January 30, 2014), the ’062 patent (filed
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`January 31, 2014), and the ’906 patent (filed January 29, 2014). (Jelenchick Decl., Exs. J-L.)
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`Similarly, the references used in these petitions overlap with many of the patent and other prior
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`art references from the first round of IPR petitions and Micro Motion’s Invalidity Contentions.
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`(Jelenchick Decl., Exs. A-E.) Just as with the petitions for the ’646, ’761, ’136, and ’854
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`patents, Invensys may file a preliminary response within three months of the notice dates. The
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`PTAB then has three months or until July 2014, to institute the IPR proceedings.
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`Once the petitions are instituted, the PTAB will have one year to issue final
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`decisions. 35 U.S.C. § 316(a)(11). Thus, the IPR proceedings for all of the asserted Invensys
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`patents will be concluded no later than July 2015, which is just three months before this case is
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`set for trial.
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`C. Micro Motion’s IPR Petitions Are Likely To Be Granted
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`Recent statistics illustrate that over 80% of all IPR petitions are granted. (See
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`Jelenchick Decl., Ex. M (showing only 62 denials out of 361 decisions on IPR petitions through
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`January 30, 2014).) In granting an IPR petition, which institutes an IPR proceeding, the PTAB
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`agrees that there is a reasonable likelihood that the petitioner will prevail on at least one of the
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`challenged claims. See 35 U.S.C. § 314(a). Given the very high rate of institution and the
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`strength of the prior art references, there is a high probability that an IPR will be instituted on at
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`least one claim in each of the seven petitions.
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`III. ARGUMENT
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`A. The Court Is Within Its Discretion To Grant A Stay
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`District courts have discretionary power to stay litigation. SSL Servs., LLC v.
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`Citrix Sys., No. 2:08-cv-158-JRG, 2012 U.S. Dist. LEXIS 35779, at *5 (E.D. Tex. Mar. 16,
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`2012) (quoting Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D.
`
`Tex. 2005)); see also Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). This
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`Court has noted many benefits to staying district court litigation pending parallel PTO
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`proceedings:
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`1. All prior art presented to the Court will have been first considered by the
`PTO, with its particular expertise;
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`2. Many discovery problems and issues relating to prior art can be alleviated
`by the PTO proceedings;
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`3. In those cases resulting in effective invalidity of the patent(s), the
`infringement claims involving the patent(s) will be dismissed;
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`4. The outcome of the PTO proceedings may encourage a settlement without
`further court intervention;
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`5. The record of the PTO proceedings would likely be entered at trial,
`thereby reducing the complexity and length of the litigation;
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`6. Issues, defenses, and evidence will be more easily limited in pretrial
`conferences and at trial; and
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`7. The cost will likely be reduced both for the parties and the Court.
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`Datatreasury Corp. v. Wells Fargo & Co., 490 F. Supp. 2d 749, 754 (E.D. Tex. 2006).
`
`Although IPR proceedings are relatively new, because of these potential benefits,
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`courts in this District, including this Court, have stayed patent cases pending IPR. See, e.g.,
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`Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA, Inc., No. 6:11-cv-0492-LED-JDL,
`
`Dkt. No. 410 (E.D. Tex. filed Mar. 5, 2013); see also Emtel, Inc. v. Lipidlabs, Inc., No. H-07-
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`1798, 2013 U.S. Dist. LEXIS 56312, at *17-18 (S.D. Tex. Apr. 19, 2013) (granting stay and
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`explaining the benefits of a stay during inter partes review); e-Watch, Inc. v. Lorex Can., Inc.,
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`No. H-12-3314, 2013 U.S. Dist. LEXIS 138198, at *6-8 (S.D. Tex. Sept. 26, 2013) (granting stay
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`when all three factors weighed in favor of a stay). Stays have been granted even where IPR
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`petitions have been filed, and the PTAB has not yet instituted any proceedings. Black & Decker,
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`Inc. v. Positec USA, Inc., No. 13 C 3075, 2013 U.S. Dist. LEXIS 153795, at *6 (N.D. Ill. Oct. 1,
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`2013) (explaining that the delay in waiting for the PTO’s decision will be fairly short).
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`In determining whether a stay pending IPR is appropriate, the following three
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`factors are relevant: (1) whether a stay will unduly prejudice the non-moving party; (2) whether
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`a stay will simplify the issues in question; and (3) whether the litigation is at an early stage.
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`Soverain Software, 356 F. Supp. 2d at 662; Semiconductor Energy Lab. Co. v. Chimei Innolux
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`Corp., No. SACV 12-21-JST (JPRx), 2012 U.S. Dist. LEXIS 186322, at *3-4 (C.D. Cal. Dec. 19,
`
`2012) (explaining that the three-factor analysis previously applied to inter partes reexaminations
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`should apply to IPR proceedings). As discussed below, all three factors favor a stay in this case.
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`B. Invensys Will Not Suffer Undue Prejudice From A Stay
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`Invensys is not prejudiced, let alone unduly prejudiced, by a stay. Courts have
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`held that the mere fact and length of any delay does not demonstrate prejudice sufficient to deny
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`a request for a stay. Semiconductor Energy, 2012 U.S. Dist. LEXIS 186322, at *8. Here, any
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`delay incurred due to the stay will be relatively short and for a limited duration because the IPR
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`process will be completed within one year after it is instituted (and it will be instituted within six
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`months of filing). 35 U.S.C. § 316(a)(11); see also Software Rights Archive, LLC v. Facebook,
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`Inc., Nos. C-12-3970 RMW, C-12-3971 RMW, C-12-3972, 2013 U.S. Dist. LEXIS 133707, at
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`*6-7 (N.D. Cal. Sept. 17, 2013); Semiconductor Energy, 2012 U.S. Dist. LEXIS 186322, at *10
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`(“[T]he delay caused by the new IPR procedure is significantly less than the delay caused by the
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`old procedure.”). In addition, the estoppel provision becomes effective as soon as the PTAB
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`issues its final written decision, rather than after subsequent appeals. See 35 U.S.C. § 315(e)(2).
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`Because the mere potential for delay alone is insufficient to establish undue
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`prejudice, Cameras Onsite, LLC v. Digital Management Solutions, Inc., No. H-09-2518, 2010
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`U.S. Dist. LEXIS 28648, at *3 (S.D. Tex. Mar. 24, 2010), Invensys must show how it would
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`otherwise be unduly prejudiced. It cannot make such a showing. Instead, any so-called
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`prejudice is its own making.
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`Micro Motion introduced its accused Coriolis flowmeters in 2006. However,
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`Invensys waited nearly six years to complain about Micro Motion’s (and Emerson’s) alleged
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`infringing conduct. Simply because Invensys sat on its rights does not establish sufficient
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`prejudice to meet its burden. See Hill-Rom Servs. v. Stryker Corp., No. 1:11-cv-1120-JMS-DKL,
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`2012 U.S. Dist. LEXIS 165470, at *9 (S.D. Ind. Nov. 20, 2012) (“Hill-Rom does not deny
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`Stryker’s assertion that Hill-Rom chose to wait more than six years after the allegedly infringing
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`Case 6:12-cv-00799-JRG Document 107 Filed 02/07/14 Page 14 of 20 PageID #: 2722
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`Stryker product was released to pursue this infringement action. Therefore, any prejudice Hill-
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`Rom will suffer regarding the approaching expiration of its patents is largely of its own
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`making.”).
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`In addition, any argument that Invensys might make that it would be irreparably
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`harmed by Micro Motion’s and Emerson’s continued alleged infringing conduct during the stay
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`is diluted for at least three reasons. First, Invensys has not sought preliminary injunctive relief in
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`this case. See id. at *7-8 (explaining that “attempts by a patentee to argue undue prejudice are
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`undermined if it has elected not to pursue a preliminary injunction”). Second, even if Invensys
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`ultimately prevails in the IPR proceedings and its patents survive without amendment, to the
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`extent it can prove infringement, it will be entitled to collect damages accrued during the stay.
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`See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 603 (Fed. Cir. 1985). Third, as the patent owner,
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`Invensys can participate fully in the IPR proceedings and defend its patents against Micro
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`Motion’s invalidity challenges. Moreover, Invensys can accelerate the IPR proceedings and
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`minimize the length of the stay by providing any necessary responses to the PTAB in advance of
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`the event deadlines.
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` Invensys can hardly complain that a short stay for the limited duration of the
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`IPR proceedings is unduly prejudicial. Because there is no undue prejudice to Invensys, this
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`factor weighs in favor of a stay.
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`C. The IPR Proceedings Will Simplify The Issues
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`The second factor – whether a stay will simplify the issues – also favors a stay.
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`No matter the outcome of the IPR proceedings, the issues in this case will be simplified. To the
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`extent some or all of the asserted claims are invalidated, a stay will save the Court and the parties
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`from wasting time and resources addressing invalid claims. See e-Watch, 2013 U.S. Dist. LEXIS
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`Case 6:12-cv-00799-JRG Document 107 Filed 02/07/14 Page 15 of 20 PageID #: 2723
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`138198, at *5 (“[T]he continuation of this litigation will likely result in the unnecessary
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`expenditure of the parties’ and court’s time and resources on claims that may be fundamentally
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`altered by the USPTO’s determination regarding the patent[]-in-suit.”); see also Cameras Onsite,
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`2010 U.S. Dist. LEXIS 28648, at *11 (“If the patent is partially invalidated while this case is
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`pending, then by not granting a stay the Court possibly will have wasted its time and the time
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`and resources of the parties by addressing invalid claims.”). In addition, the prior art references
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`used during the IPR proceedings are subject to statutory estoppel and will be eliminated from the
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`case. See 35 U.S.C. § 315(e). Further, the damages portion of the case may be simplified. Past
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`damages may be eliminated or reduced on any amended claim pursuant to 35 U.S.C § 252.
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`In addition, to the extent any of the asserted claims survive the IPR proceedings,
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`the PTO record will provide valuable analysis to the Court. See e-Watch, 2013 U.S. Dist. LEXIS
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`138198, at *6-7 (“[T]he USPTO’s insight and expertise regarding the validity of the patents
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`would be of invaluable assistance to this court.”); Emtel, 2013 U.S. Dist. LEXIS 56312, at *17
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`(“[The patentee’s] statements during reexamination and the PTO’s insights will be valuable to
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`the issues this court will have to decide.”). For example, the PTAB might find that even the
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`“broadest reasonable construction” of the asserted claims includes a requirement that is not
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`present in the accused Micro Motion Coriolis flowmeters. Such a finding would preclude the
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`possibility of infringement. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-
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`00001, Paper No. 15, at 7 (PTAB Jan. 9, 2013) (Jelenchick Decl., Ex. N).5 In addition, the
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`5 During an IPR proceeding, the PTAB is required to use a different standard for
`construing claims than that used by district courts. The PTAB must give claims their broadest
`reasonable construction consistent with the patent specification. 37 C.F.R. § 42.100(b). In
`contrast, in an infringement action, a district court seeks to apply the “proper” construction; that
`is, the court construes the patent claims in a manner that most naturally aligns with the patent’s
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`PTAB’s decisions may provide the Court with guidance regarding other issues related to
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`invalidity, such as issues of indefiniteness. See Universal Remote Control, Inc. v. Universal
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`Elecs., Inc., No. IPR2013-00152, Paper No. 8, at 9-13, 20 (PTAB Aug. 19, 2013) (concluding a
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`term-at-issue was indefinite) (Jelenchick Decl., Ex. O).
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`At a minimum, the IPR proceedings will streamline the issues for trial, by inter
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`alia, narrowing the number of asserted claims, lessening the number of claim terms that need
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`interpreting, and/or eliminating prior art references from consideration. For at least these
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`reasons, this factor weighs in favor of a stay.
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`D. The Current Posture Of This Case Favors A Stay
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`The third and final factor – whether the litigation is at an early stage – also favors
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`a stay. While this case has been pending for more than a year, it is still in its preliminary stages.
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`Fact discovery is on-going – Invensys continues to produce documents; some written discovery
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`requests have been exchanged and answered, but more are likely; no depositions have taken
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`place; no e-discovery has been exchanged; and no expert reports have been served. The parties
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`have only recently started the claim construction process, and the Markman hearing is not
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`scheduled until May 1, 2014. Trial is set for October 13, 2015. The IPR proceedings will be
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`completed before the expected trial date in this action, no matter what the PTAB decides.
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`Now that claim construction is underway, it is likely this case will progress
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`rapidly. Over the next several months, the parties will complete fact discovery, brief claim
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`construction, complete tutorials for the Court, and conduct a Markman hearing. Thereafter, the
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`parties will serve expert reports and conduct expert discovery as well as file summary judgment
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`description of the invention. Geospan Corp. v. Pictometry Int’l Corp., No. 08-816 ADM/JSM,
`2012 U.S. Dist. LEXIS 168802, at *14-15 (D. Minn. Nov. 28, 2012).
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`motions in advance of providing the Court with pretrial submissions. “[C]onsidering the general
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`time line of patent litigation, there is more work ahead of the parties and the Court than behind
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`the parties and the Court.” Tierravision, Inc. v. Google, Inc., No. 11-cv-2170, 2012 U.S. Dist.
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`LEXIS 21463, at *6 (S.D. Cal. Feb. 21, 2012).
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`Courts have