Case 1:19-cv-00819-ADA Document 21 Filed 08/23/19 Page 1 of 17
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`NEODRON LTD.,
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`Plaintiff,
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`v.
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`DELL TECHNOLOGIES, INC.,
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`
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`Defendant.
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`
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`Civil Action No. 1:19-cv-00819-ADA
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`DEFENDANT DELL TECHNOLOGIES, INC.’S OPPOSED MOTION TO STAY
`ACTION PENDING FINAL DISPOSITION OF RELATED PROCEEDING BEFORE
`THE UNITED STATES INTERNATIONAL TRADE COMMISSION
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`TABLE OF CONTENTS
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`Page
`Introduction ............................................................................................................................. 1
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`I.
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`II. Background ............................................................................................................................. 2
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`III. Argument ................................................................................................................................ 4
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`A. Neodron’s Bifurcation of its Case Circumvents Congressional Intent ............................. 4
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`B. The Court May Stay this Action Pursuant to its Inherent Authority ................................. 5
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`C. All Three Factors Weigh in Favor of Staying this Action ................................................ 5
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`1. There is no Undue Prejudice to the Non-Moving Party ................................................. 5
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`2. Dell will Suffer Severe Hardship and Inequity if this Case Proceeds at the Same Time
`as the ITC Investigation ................................................................................................. 7
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`3.
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`Judicial Resources will be Saved and Duplicative Litigation will be Avoided by
`Staying This Action ........................................................................................................ 8
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`IV. Conclusion ............................................................................................................................ 10
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`TABLE OF AUTHORITIES
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`Page(s)
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`
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`CASES
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`Alloc, Inc. v. Unilin Decor N.V.,
`No. 03-253-GMS, 2003 U.S. Dist. LEXIS 11917 (D. Del. July 11, 2003) .......................6, 8, 9
`
`Arris Enters. LLC v. Sony Corp.,
`No. 17-cv-02669-BLF, 2017 U.S. Dist. LEXIS 121035 (N.D. Cal. Aug. 1,
`2017) ..................................................................................................................................6, 7, 8
`
`Avago Techs. U.S., Inc. v. Iptronics, Inc.,
`No. 5:10-CV-02863-EJD, 2013 U.S. Dist. LEXIS 21223 (N.D. Cal. Feb. 15,
`2013) ................................................................................................................................ passim
`
`B & D Produce Sales, LLC v. Packman1, Inc.,
`No. SA-16-CV-99-XR, 2016 U.S. Dist. LEXIS 110759 (W.D. Tex. Aug. 19,
`2016) ....................................................................................................................................5, 10
`
`Black Hills Media, LLC v. Samsung Elecs. Co.,
`No. 2:13-CV-379-JRG-RSP, 2014 U.S. Dist. LEXIS 201106 (E.D. Tex. Mar.
`14, 2014) ................................................................................................................................4, 6
`
`Boudreaux v. Metro. Life Ins. Co.,
`No. 95-CV-138, 1995 U.S. Dist. LEXIS 2656 (E.D. La. Feb. 24, 1995) ..................................5
`
`Cherokee Nation v. United States,
`124 F.3d 1413 (Fed. Cir. 1997)..................................................................................................5
`
`Enter. Sys. Techs. S.A.R.L. v. Motorola Mobility Holdings, Inc.,
`No. 6:14-cv-553-MHS, 2014 U.S. Dist. LEXIS 201105 (E.D. Tex. Nov. 4,
`2014) ..........................................................................................................................................6
`
`FormFactor, Inc. v. Micronics Japan Co.,
`No. CV-06-07159 JSW, 2008 U.S. Dist. LEXIS 13114 (N.D. Cal. Feb. 11,
`2008) ..................................................................................................................................6, 7, 9
`
`Google Inc. v. Creative Labs, Inc.,
`No. 16-cv-02628-JST, 2016 U.S. Dist. LEXIS 163696 (N.D. Cal. Nov. 28,
`2016) ..........................................................................................................................................8
`
`Lincoln Elec. Co. v. Atl. China Welding Consumables,
`No. 1:09 CV 1844, 2010 U.S. Dist. LEXIS 2721 (N.D. Ohio Jan. 4, 2010) ...............5, 8, 9, 10
`
`Logan v. Hormel Foods Corp.,
`No. 6:04-CV-211, 2004 U.S. Dist. LEXIS 30327 (E.D. Tex. Aug. 25, 2004) ........................10
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`SanDisk Corp. v. Phison Elecs. Corp.,
`538 F. Supp. 2d 1060 (W.D. Wisc. 2008)....................................................................6, 7, 8, 10
`
`Transco Products, Inc. v. Performance Contracting, Inc.,
`38 F.3d 551 (Fed. Cir. 1994)......................................................................................................9
`
`Zenith Elecs., LLC v. Sony Corp.,
`No. 11-CV-02439, 2011 U.S. Dist. LEXIS 79976 (N.D. Cal. July 22, 2011) ...........................4
`
`STATUTES
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`28 U.S.C. § 1659 ..............................................................................................................................4
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`I.
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`INTRODUCTION
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`Defendant Dell Technologies, Inc. (“Dell”) moves to stay the instant case pending the
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`conclusion of International Trade Commission Investigation No. 337-TA-1162 (“ITC
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`investigation”). The ITC investigation involves directly related patents, the same parties, the same
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`products, and, accordingly, substantially similar issues to those of the instant case.
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`Neodron filed two similar district court actions against Dell within six weeks of each other.
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`The first involves the same four patents as those in the ITC investigation and has since been stayed
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`by this Court. The second, this instant case, involves three patents covering substantially similar
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`subject matter as the ITC investigation. Indeed, two of the three patents in this action are directly
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`related to the patents in the ITC investigation, with similar specifications and many overlapping
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`claim terms. All three of the patents in this action involve the same technology and the same
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`accused products as in the ITC. Moreover, the representative accused product in this action, the
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`Dell Latitude 7389, is the exact same product as the one accused in the ITC investigation. The
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`“touch-enabled” products generally accused in this action are also the same as those accused in the
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`ITC investigation. (Ex. A at 33–36).1 Thus, this case will invariably overlap with the ITC
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`investigation.
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`In light of the significant overlap, staying the entirety of this case is proper. A stay will
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`avoid duplicative discovery, inconsistent findings, and will simplify the issues that this Court will
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`need to consider. The anticipated ITC investigation, which is set for a hearing in March 2020, will
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`quickly define the nature and extent of the dispute between the parties. Furthermore, Congress
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`specifically intended that courts stay related district court actions pending a related ITC action.
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`1 The amended complaint before the ITC and its relevant exhibits are submitted herewith as
`exhibits to the Naggar Declaration. All exhibits refer to exhibits to the Declaration.
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`Neodron, contrary to this intent, chose to bifurcate this action in order to force Dell to defend
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`nearly identical cases on two fronts. Accordingly, Dell respectfully requests that this case be stayed
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`in its entirety pending the outcome of the ITC investigation.
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`II.
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`BACKGROUND
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`On May 23, 2019, Neodron filed an amended complaint before the ITC. (Ex. A). The ITC
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`complaint alleges that the accused products, including the Dell Latitude 7389, infringes U.S. Patent
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`Nos. 8,432,173 (the “’173 Patent”); 8,791,910 (the “’910 Patent”); 9,024,790 (the “’790 Patent”);
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`and 9,372,580 (the “’580 Patent”) (collectively the “ITC Patents”). (Ex. A at 33–36). On May 21,
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`2019, Neodron filed a first lawsuit in this Court, Neodron Ltd v. Dell Technologies Inc., case no.
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`6:19-cv-00318 (W.D. Tex.) (“Neodron I”), which involved all of the ITC Patents. Because the
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`patents at issue were the same, Neodron I was subject to a mandatory stay. (Neodron I at ECF no.
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`14). Within six weeks, on June 28, 2019, Neodron commenced this action by filing a similar
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`complaint to the one filed in Neodron I in the same Court. (ECF no. 1). Like the complaint in
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`Neodron I, the complaint here alleges patent infringement of the exact same accused products,
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`including the Dell Latitude 7389, based on three patents. (Id.) In fact, two of the three patents are
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`formally related to the ITC Patents, and all three involve the same technology and the same exact
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`accused products as in the ITC investigation.
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`The ’286 Patent in this action is the parent to the ’790 Patent in the ITC investigation. The
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`’286 Patent issued from U.S. Patent Application No. 12/899,229 (the “’229 Application”) (ECF
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`no. 1-1), and the ’790 Patent issued from U.S. Patent Application No. 13/347,312, which is a
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`continuation of the ’229 Application. (Ex. D at 1). Thus, the ’286 Patent and ’790 Patent share the
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`same specification and similar claims. (Compare ECF no. 1-1 to Ex. D). The patents also share
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`several claim terms. (Id.) For example, the claims in both patents include a “plurality of keys” and
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`“control logic,” where key assignment is “biased in favor of” a particular key. (ECF no. 1-1 at cl.
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`1; Ex. D at cl. 1).
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`Similarly, the ’547 Patent here is a sibling to the ’173 Patent in the ITC investigation. The
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`’547 Patent issued from U.S. Application No. 12/939,816 and is a continuation of U.S. Application
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`No. 12/317,305, which is a continuation-in-part of U.S. Application No. 11/868,566 (the “’566
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`Application”). (ECF no. 1-5). Similarly, the ’173 Patent is a continuation of U.S. Application No.
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`12/703,614, which is a continuation of the same ’566 Application. (Ex. C at 1). Furthermore, both
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`the ’547 and ’173 Patents claim priority to the same provisional, Application No. 60/862,358. (Id.;
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`ECF no. 1-5). The ’547 and ’173 Patents are thus siblings in that they share a grandparent and a
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`provisional application. Because of their relationship, the two patents contain similar specifications
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`and overlapping claim terms. (Compare ECF no. 1-5 to Ex. C). For example, four of the five
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`figures are the same in both patents. (ECF no. 1-5 at 4–8; Ex. C at 3–6). Additionally, the claims
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`in both patents refer to a “sensing element.” (ECF no. 1-5 at cl. 1; Ex. C at cl. 1). Both patents also
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`claim adjusting a parameter based on a capacitive sensor. (Id.) The ’547 Patent claims a “signal
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`indicative of a first capacitance” which is used to “adjust a value of a parameter” (ECF no. 1-5 at
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`cl. 1), while the ’173 Patent similarly claims “signals indicating one or more first capacitive
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`couplings” and “adjusting the parameter.” (Ex. C at cl. 1).
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`The ’237 Patent in this action is also directed to touch screen technology. (ECF no. 1-3).
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`The accused products with respect to the ’237 Patent are the same. Also, the representative accused
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`product, the Dell Latitude 7389, is the same in both actions and across all patents. (ECF no. 1-4).
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`Pursuant to Local Rule 7(i), the parties conferred on August 23, 2019 in an attempt to
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`resolve this matter. Neodron opposes this motion and no agreement could be made.
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`III. ARGUMENT
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`There is no reason for this proceeding to continue until a resolution is reached in the ITC
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`investigation because both actions involve related patents and the same products.
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`A.
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`Neodron’s Bifurcation of its Case Circumvents Congressional Intent
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` In enacting 28 U.S.C. § 1659, “‘Congress explicitly intended that district courts should
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`consider using their discretionary power to stay patent infringement litigation that is related to, but
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`not duplicative of, an action before the ITC.’” Avago Techs. U.S., Inc. v. Iptronics, Inc., No. 5:10-
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`CV-02863-EJD, 2013 U.S. Dist. LEXIS 21223, at *5–6 (N.D. Cal. Feb. 15, 2013) (quoting Zenith
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`Elecs., LLC v. Sony Corp., No. 11-CV-02439, 2011 U.S. Dist. LEXIS 79976 (N.D. Cal. July 22,
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`2011)).
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`Neodron attempts to circumvent congressional intent and a mandatory stay pursuant to §
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`1659 by technically bifurcating two cases that should have been filed together. Neodron filed this
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`action in the very same court as Neodron I, and this case involves the same issues because the
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`patents are related, and the same products are accused. Neodron is, thereby, attempting to engineer
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`a situation where Dell would be forced to defend the very same case in two fora. Such tactical
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`gamesmanship should not be allowed, and this case should be stayed until the completion of the
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`ITC investigation. Any potential harm to Neodron is of its own making, and therefore a stay should
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`be granted. See e.g., Avago, 2013 U.S. Dist. LEXIS 21223, at *8 (finding a stay appropriate when
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`any potential harm to Plaintiffs was of “their own making,” and staying a case pending an ITC
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`investigation); Black Hills Media, LLC v. Samsung Elecs. Co., No. 2:13-CV-379-JRG-RSP, 2014
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`U.S. Dist. LEXIS 201106, at *3-4 (E.D. Tex. Mar. 14, 2014). Neodron’s own tactical decision not
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`to include the ITC patents in this proceeding should not force Dell to litigate the very same issues
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`on two fronts.
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`B.
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`The Court May Stay this Action Pursuant to its Inherent Authority
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`A district court has inherent authority to stay its proceedings. B & D Produce Sales, LLC
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`v. Packman1, Inc., No. SA-16-CV-99-XR, 2016 U.S. Dist. LEXIS 110759, at *3 (W.D. Tex. Aug.
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`19, 2016). A federal trial court may even stay its own proceedings for an indefinite period of time.
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`Cherokee Nation v. United States, 124 F.3d 1413, 1416 (Fed. Cir. 1997). Furthermore, “[w]hen
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`and how to stay proceedings is within the sound discretion of the trial court.” Id. A discretionary
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`stay is particularly proper when there is a related ITC, even when the patents in both actions do
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`not overlap. Avago, 2013 U.S. Dist. LEXIS 21223, at *5–6.
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`Courts consider three factors in determining if a stay is proper: “(1) any potential prejudice
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`to the non-moving party; (2) the hardship and inequity to the moving party if the action is not
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`stayed; and (3) the judicial resources saved by avoiding duplicative litigation.” B & D Produce
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`Sales, 2016 U.S. Dist. LEXIS 110759, at *3 (citing cases). In deciding a motion to stay courts
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`should be “‘guided by the policies of justice and efficiency.’” Id. (quoting Boudreaux v. Metro.
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`Life Ins. Co., No. 95-CV-138, 1995 U.S. Dist. LEXIS 2656 (E.D. La. Feb. 24, 1995)).
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`C.
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`All Three Factors Weigh in Favor of Staying this Action
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`1.
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`There is no Undue Prejudice to the Non-Moving Party
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`Neodron will not be prejudiced by a stay pending the completion of the ITC investigation
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`because this case would likely be stayed for a short, finite duration. The target date for completion
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`of the investigation is October 26, 2020. (Ex. B at 4). The ITC will, thus, likely terminate within
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`fifteen months. (See id.) Courts have routinely stayed cases involving related products or related
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`patents for a similar amount of time. See e.g., Lincoln Elec. Co. v. Atl. China Welding
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`Consumables, No. 1:09 CV 1844, 2010 U.S. Dist. LEXIS 2721, at *9 (N.D. Ohio Jan. 4, 2010);
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`Avago, 2013 U.S. Dist. LEXIS 21223, at *7 (finding little, if any, prejudice where a stay pending
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`an ITC determination “will likely only last about twelve months.”)
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`Neodron will not suffer undue prejudice because this case is in its infancy. Courts will
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`favor staying a case where the case is early enough that discovery has not started and where no
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`trial date has been set. Alloc, Inc. v. Unilin Decor N.V., No. 03-253-GMS, 2003 U.S. Dist. LEXIS
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`11917, at *8 (D. Del. July 11, 2003); Black Hills, 2014 U.S. Dist. LEXIS 201106, at *3 (staying a
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`case where the “deadline for substantial completion for discovery has not been met and the parties
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`have not yet taken depositions going to the merits of the case”). Discovery in this case has not
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`commenced and no trial date has been set. In fact, the only substantial pleading in this case has
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`been the Complaint. A stay at this stage in the proceeding would be the least harmful to the parties
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`because the case can be stayed before the parties incur significant litigation expenses. Alloc, 2003
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`U.S. Dist. LEXIS 11917, at *8 (finding a discretionary stay appropriate when it occurs before
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`substantial litigation-related expenses are incurred).
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`No harm would result from a stay because Neodron’s recovery in this case, if any, is limited
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`to monetary damages. Courts have found that a delay in the recovery of monetary damages does
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`not justify denying a stay. See e.g., FormFactor, Inc. v. Micronics Japan Co., No. CV-06-07159
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`JSW, 2008 U.S. Dist. LEXIS 13114, at *6–7 (N.D. Cal. Feb. 11, 2008); SanDisk Corp. v. Phison
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`Elecs. Corp., 538 F. Supp. 2d 1060, 1067 (W.D. Wisc. 2008) (“Plaintiff’s only real ‘injury’ is that
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`it will have to wait for any money damages, which is always the case when a stay is imposed.”)
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`Here, Neodron has not moved for a preliminary injunction, which indicates that Neodron
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`will not be harmed by any delay in this proceeding. Furthermore, Neodron would not be able to
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`show any irreparable harm because Neodron and Dell are not direct competitors. Courts have
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`found that a stay is justified where the parties are not direct competitors. See e.g., Arris Enters.
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`LLC v. Sony Corp., No. 17-cv-02669-BLF, 2017 U.S. Dist. LEXIS 121035, at *5–*6 (N.D. Cal.
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`Aug. 1, 2017); Enter. Sys. Techs. S.A.R.L. v. Motorola Mobility Holdings, Inc., No. 6:14-cv-553-
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`MHS, 2014 U.S. Dist. LEXIS 201105, at *4 (E.D. Tex. Nov. 4, 2014). Dell is a manufacturer and
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`provider of personal computers, whereas Neodron is an Irish patent holding company that does not
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`make or sell any products. Without direct competition, Neodron will not suffer irreparable harm.
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`2.
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`Dell will Suffer Severe Hardship and Inequity if this Case Proceeds at the
`Same Time as the ITC Investigation
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`Dell will suffer severe hardship and inequity by having to defend parallel, duplicative
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`litigation in two forums. Courts have found severe hardship sufficient to justify a stay where
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`similar patents and the same accused product were at issue. Arris, 2017 U.S. Dist. LEXIS 121035,
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`at *7–*8. In Sandisk, 538 F. Supp. 2d at 1066, the court found a stay appropriate where the same
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`products were at issue, and both cases shared prosecution history, a specification, some prior art,
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`and certain claim terms. Courts have also found a stay was justified where witnesses, such as an
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`inventor, overlap in both proceedings. FormFactor, 2008 U.S. Dist. LEXIS 13114, at *8.
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`Here, Dell’s hardship is clear. If this case proceeds, Dell will be required to defend
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`overlapping issues on two fronts. The exact same product and the exact same technology is accused
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`in this proceeding and in the ITC investigation. Several of the witnesses will overlap. For example,
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`the inventor of the ’547 the ’286 patents, Harald Phillip, is also a named inventor in three of the
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`patents at issue in the ITC investigation. (ECF no. 1-1 at 1; ECF no. 1-5 at 1; Ex. C at 1; Ex. D at
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`1; Ex. E at 1). Two of the patents are formally related. These patents will share prosecution history,
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`specifications, prior art, and claim terms. Depositions will overlap, requiring multiple depositions
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`of Neodron’s witnesses and requiring Dell’s witnesses to be in two places at once. See e.g.,
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`FormFactor, 2008 U.S. Dist. LEXIS 13114, at *8. Discovery will, therefore, be duplicative. The
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`significant overlapping issues will pose a severe hardship to Dell. Therefore, this factor weighs in
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`favor of staying this proceeding for a finite period of time while the ITC investigation proceeds.
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`3.
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`Judicial Resources will be Saved and Duplicative Litigation will be
`Avoided by Staying This Action
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`Staying this action will conserve judicial resources and the each of the parties’ resources.
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`Courts allow a stay where there are overlapping issues in order to avoid duplicative litigation.
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`Alloc, 2003 U.S. Dist. LEXIS 11917, at *6–*7; Lincoln, 2010 U.S. Dist. LEXIS 2721, at *9; Arris,
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`2017 U.S. Dist. LEXIS 121035, at *11; Avago, 2013 U.S. Dist. LEXIS 21223, at *10. Furthermore,
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`courts have found that the discovery and the rulings in an ITC investigation, even if non-binding,
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`can benefit district court litigation involving the same products or similar technologies. Arris, 2017
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`U.S. Dist. LEXIS 121035, at *11; Sandisk, 538 F. Supp. 2d at 1067 (quoting H.R.Rep. No. 103-
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`826(I), at 142) (“the record developed in the proceeding before the commission may be used to
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`‘expedite proceedings and provide useful information to the court’”); Google Inc. v. Creative Labs,
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`Inc., No. 16-cv-02628-JST, 2016 U.S. Dist. LEXIS 163696, at *7–*8 (N.D. Cal. Nov. 28, 2016).
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`The issues before the ITC and the issues in this proceeding significantly overlap. Two of
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`the three patents are from the same family as their counterparts in the ITC investigation. All of the
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`patents in both proceedings involve similar touch screen technology. (See Ex. C–F; ECF nos. 1-1
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`to 1-6). Furthermore, the witnesses expected to testify are the same, such as the common inventor.2
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`As explained in section II, several of the claim terms, such as “plurality of keys,” “control logic,”
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`“biased in favor of,” and “sensing element,” will be the same in both proceedings. Claim
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`construction in the ITC investigation is expected in October 2019. (Ex. B at 3). It would be
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`duplicative for this proceeding to move toward claim construction on many of same or similar
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`terms. The cases also involve the exact same “touch-enabled” products. (Ex. A at 33–36; ECF no.
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`1). Furthermore, the specifically identified product, the Dell Latitude 7389, is the exact same
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`2 Harald Phillip is a common inventor in several of the patents at issue here and before the ITC.
`(ECF no. 1-1 at 1; ECF no. 1-5 at 1; Ex. C at 1; Ex. D at 1; Ex. E at 1).
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`product as the one accused in the ITC investigation. (Id.) Because of the significant overlap
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`between this case and the ITC investigation, the discovery is likely to be the same, and the issues
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`are the same. A stay will, thus, promote efficiency because many of the overlapping issues are
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`likely to be resolved before this case continues.
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`The patents that are formally related to the ITC patents contain the same subject matter as
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`those in the ITC. The Federal Circuit has held that “‘a continuing application […] contains at least
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`part of the disclosure of the other application and names at least one inventor in common with that
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`application.’” Alloc, 2003 U.S. Dist. LEXIS 11917, at *6–*7 (quoting Transco Products, Inc. v.
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`Performance Contracting, Inc., 38 F.3d 551, 555 (Fed. Cir. 1994)). In Alloc, a stay was appropriate
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`because the overlapping issues would promote judicial efficiency where the patent in the litigation
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`was formally related to a patent undergoing reexamination. 2003 U.S. Dist. LEXIS 11917, at *6–
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`*7; see also FormFactor, 2008 U.S. Dist. LEXIS 13114, at *10–*11 (staying a case pending an
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`ITC investigation where patents at issue in the district court litigation were in the same family as
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`those before the ITC, even though the patents did not contain the same claims). Here, two of the
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`three patents at issue in this proceeding are formally related to those in the ITC investigation.
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`Therefore, a stay would reduce overlap and would best promote judicial economy.
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`With respect to ’237 Patent, which is not formally related to the patents in the ITC
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`investigation, a stay will also promote judicial economy. Courts have allowed a stay where both
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`the ITC and district court litigation involved the same product. See e.g., Lincoln, 2010 U.S. Dist.
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`LEXIS 2721, at *9 (staying an action pending an ITC and finding that discovery will be similar
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`because the same product is accused, even though the patents were not formally related)3; see also
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`3 Notably, in the only case that the court in Lincoln did not stay, the defendant was not a party to
`the ITC investigation—which is not the case here. 2010 U.S. Dist. LEXIS 2721, at *13.
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`Case 1:19-cv-00819-ADA Document 21 Filed 08/23/19 Page 14 of 17
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`
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`Avago, 2013 U.S. Dist. LEXIS 21223, at *8–*10 (ordering a stay of business tort claims along
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`with claims of infringement of a patent not before the ITC). Here, a stay would conserve even
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`more resources because the same exact products are involved.
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`Courts have also held that cases involving duplicative discovery, such as overlapping
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`witnesses, should be stayed. Lincoln, 2010 U.S. Dist. LEXIS 2721, at *10, *15. Here, because the
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`exact same products are accused, the witnesses will likely be identical and much of the discovery
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`will be similar. Furthermore, as explained above, two of the patents in this case share a common
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`inventor with the patents in the ITC investigation. Judicial economy, therefore, favors a stay to
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`avoid duplicative discovery.
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`A discretionary stay should be used to avoid duplicative proceedings and potentially
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`inconsistent rulings. See e.g., Lincoln, 2010 U.S. Dist. LEXIS 2721, at *11; see also B & D
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`Produce Sales, 2016 U.S. Dist. LEXIS 110759, at *5 (staying a case in part because parallel
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`litigation before an administrative agency would cause “duplicative litigation and the possibility
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`of inconsistent rulings”). Inconsistent parallel claim construction, for instance, can be avoided with
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`a stay. Sandisk, 538 F. Supp. 2d at 1066 (ordering a stay in part because of shared claim terms);
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`see Logan v. Hormel Foods Corp., No. 6:04-CV-211, 2004 U.S. Dist. LEXIS 30327, at *7 (E.D.
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`Tex. Aug. 25, 2004) (transferring a case partially based on a “risk” of inconsistent claim
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`constructions, and explaining that such a risk would “create greater uncertainty regarding the
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`patent's scope, and impede the administration of justice”).
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` The cases before the ITC and this Court are very closely related. The ITC has the same
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`defendant, it involves the same products, the same witnesses are expected to testify, and very
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`closely related patents are at issue. Therefore, a stay is appropriate in this case.
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`IV. CONCLUSION
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`For the reasons set forth above, the Court should grant Defendant’s Motion to Stay.
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`Case 1:19-cv-00819-ADA Document 21 Filed 08/23/19 Page 15 of 17
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`
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`Dated: August 23, 2019
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`Respectfully submitted,
`
`
`
`
`
`By: /s/ Michael J. Newton
`
`
`Michael J. Newton (TX Bar No. 24003844)
`Brady Cox (TX Bar No. 24074084)
`ALSTON & BIRD LLP
`2200 Ross Avenue, Suite 2300
`Dallas, Texas 75201
`Phone: (214) 922-3400
`Fax:
`(214) 922-3899
`mike.newton@alston.com
`brady.cox@alston.com
`
`Charles A. Naggar (admitted pro hac vice)
`NY Bar No. 5356449
`ALSTON & BIRD LLP
`90 Park Avenue, 15th Floor
`New York, NY 11230
`Phone: (212) 210-9400
`Fax: (212) 210-9444
`charles.naggar@alston.com
`
`John M. Guaragna (TX Bar No. 24043308)
`Brian K. Erickson (TX Bar No. 24012594)
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Phone: 512.457.7000
`Fax: 512.457.7001
`john.guaragna@dlapiper.com
`brian.erickson@dlapiper.com
`
`Sean C. Cunningham (Pro Hac Vice Pending)
`CA Bar No. 98895
`Erin Gibson (Pro Hac Vice Pending)
`CA Bar No. 229305
`Robert Williams (Pro Hac Vice Pending)
`CA Bar No. 246990
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Phone: 619.699.2700
`Fax: 619.699.2701
`sean.cunningham@dlapiper.com
`erin.gibson@dlapiper.com
`robert.williams@dlapiper.com
`
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`Case 1:19-cv-00819-ADA Document 21 Filed 08/23/19 Page 16 of 17
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`
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`Attorneys for Defendant Dell Technologies,
`Inc.
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`
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`Case 1:19-cv-00819-ADA Document 21 Filed 08/23/19 Page 17 of 17
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record who are deemed to have consented to electronic
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`service are being served with a copy of this document via the Court’s CM/ECF system on August
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`23, 2019.
`
`
`
`
`
`
`/s/ Michael J. Newton
`Michael J. Newton
`
`
`
`
`LEGAL02/39118034v17
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