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` Case 3:11-cv-02353-N Document 220 Filed 02/27/12 Page 1 of 5 PageID 3119 Case 3:11-cv-02353-N Document 220 Filed 02/27/12 Page 1 of 5 PageID 3119
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`Civil Action No.11-cv-02353-N
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`MOBILEMEDIA IDEAS LLC,
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`Plaintiff,
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`RESEARCH IN MOTION LIMITED and
`RESEARCH IN MOTION CORPORATION,
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`Defendants.
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`SUPPLEMENTAL BRIEF IN SUPPORT OF MOTION TO STAY
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`Defendants Research In Motion Limited and Research In Motion Corporation
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`(collectively “RIM”) file this Supplemental Brief in further support of their August 26, 2011
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`Motion to Stay (“Motion to Stay”) (Docket No. 102). RIM submitted its Reply Brief in further
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`support of its Motion to Stay on November 15, 2011 (Docket No. 171), and this issue is currently
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`pending before the Court. RIM respectfully files this Supplemental Submission in order to
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`inform the Court of events that have an impact on its Motion to Stay that have occurred since
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`RIM’s Reply Brief was filed.
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`RIM’s Motion to Stay is based on two alternative grounds: (1) there is an arbitration
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`pending that effects six of the sixteen patents-in-suit, and (2) many of the asserted claims of the
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`patents-in-suit are currently in reexamination proceedings before the United States Patent and
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`Trademark Office (“PTO”) and/or have had claims significantly modified as part of
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`reexamination proceedings. That is, since RIM filed its Motion to Stay, MMI has added,
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`amended, and cancelled dozens of patent claims, including many of the claims previously and/or
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`currently being asserted against RIM. As of February 27, 2012, MMI has amended thirty-six
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`original claims of the patents-in-suit, cancelled forty-seven claims, and added nearly 200
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`additional new claims. The timeline below illustrates the rapidity with which the claims in the
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`patents-in-suit have changed over the past several months.
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`Status of MMI Patents During Reexamination (April 2011-January 2012)
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`April 2011
`May 2011
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`June 2011
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`July 2011
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`August 2011
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`September 2011
`October 2011
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`November 2011
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`December 2011
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`January 2012
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`2 new claims added
`29 new claims added
`4 original claims amended
`4 claims cancelled
`20 new claims added
`7 original claimed amended
`1 claim cancelled
`25 new claims added
`2 original claims amended
`12 claims cancelled
`20 new claims added
`4 original claims amended
`60 new claims added
`8 new claims added
`2 original claims amended
`6 new claims amended
`25 claims cancelled
`25 new claims added
`5 original claims amended
`1 claim cancelled
`12 original claims amended
`9 new claims amended
`4 claims cancelled
`1 amended claim amended back to original
`claim language
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`With eleven of the patents-in-suit still currently in reexamination, additional rejections
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`and amendments to the asserted claims are inevitable. As long as MMI continues to amend and
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`cancel the claims asserted against RIM, the landscape of this litigation continues to evolve and
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`neither RIM nor MMI can effectively or efficiently prepare for claim construction, fact
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`discovery, and expert discovery.
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`In addition, since RIM’s filed its Reply Brief, MMI has served Amended Infringement
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`Contentions that further demonstrate why a stay pending reexamination is warranted. In those
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`Amended Infringement Contentions, MMI attempts to assert fifteen claims from six of the MMI
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`patents that were amended during still-pending reexaminations, nearly all of which were
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`substantively amended. (Exhibit 1, excerpts from Jan. 20, 2012 MMI Amended Contentions.)
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`MMI’s assertion of these claims is premature because none of these claims have issued in a valid
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`patent. Proposed amendments to claims, or claims added, during reexamination are not
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`incorporated into a patent until a reexamination certificate is issued. 35 U.S.C. §307(a). MMI
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`cannot thus enforce any pending claim that has been substantively changed through amendment
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`during reexamination. See Aspex Eyewear, Inc. v. E’Lite Optik., 552 F. Supp. 2d 620, 624
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`(N.D.T.X. 2008) (“Unless a claim granted or confirmed upon reexamination is identical to an
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`original claim, the patent cannot be enforced against infringing activity that occurred before
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`issuance of the reexamination certificate.” (quoting Bloom Eng'g Co., Inc. v. N. Am. Mfg. Co.,
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`Inc., 129 F.3d 1247, 1250 (Fed. Cir. 1997)).
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`More importantly, MMI’s attempt to assert amended claims still pending before the PTO
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`further demonstrates why a stay of this case is warranted. Staying this case pending
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`reexaminations will allow for narrowing and simplifying the issues in a very unwieldy sixteen-
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`patent case. See Premier Int’l Assocs. LLC v. Hewlett-Packard Co., 554 F. Supp. 2d 717, 724
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`(E.D. Texas 2008) (“[T]he fact that [the patent owner] has filed several amendments and that the
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`PTO has issued an Office Action rejecting all 210 claims in both patents indicates that there is a
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`large amount of uncertainty regarding the scope of the claims.”) Accordingly, MMI’s own
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`actions demonstrate why a stay pending reexamination is necessary and appropriate here.
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`For the foregoing reasons, and for the reasons set forth in its August 26, 2011 Motion to
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`Stay and its November 15, 2011 Reply Brief, RIM respectfully moves the Court to stay this
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`litigation pending final resolution of reexamination of the patents-in-suit.
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`February 27, 2012
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`Respectfully submitted,
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`By: _John R. Emerson_________________
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`John R. Emerson
`Texas State Bar No. 24002053
`russ.emerson@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue
`Suite 700
`Dallas, Texas 75219-7673
`Tel: 214.651.5328
`Fax: 214.200.0884
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`Mark G. Matuschak
`mark.matuschak@wilmerhale.com
`Wyley S. Proctor
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`wyley.proctor@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, Massachusetts 02109
`Tel: 617.526.6000
`Fax: 617.526.5000
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`S. Calvin Walden
`calvin.walden@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`399 Park Avenue
`New York, New York 10022
`Tel: 212.230.8800
`Fax: 212.230.8888
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`James M. Dowd
`james.dowd@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`350 South Grand Avenue, Suite 2100
`Los Angeles, California 90071
`Tel: 213.443.5300
`Fax: 213.443.5400
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`Attorneys for Research in Motion Limited and
`Research in Motion Corporation
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` Case 3:11-cv-02353-N Document 220 Filed 02/27/12 Page 5 of 5 PageID 3123 Case 3:11-cv-02353-N Document 220 Filed 02/27/12 Page 5 of 5 PageID 3123
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 27, 2012, a copy of the foregoing was electronically
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`filed. Notice of this filing will be sent to all counsel of record by operation of the Court’s
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`Electronic Filing System.
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`__/s/ John R. Emerson________________
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