Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`VOIP-PAL.COM, INC.
`Plaintiff,
`
`v.
`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON WEB SERVICES, INC.,
`
`
`Defendants.
`
`
`
`
`
`
`Case No. 6:20-cv-272-ADA
`
`VOIP-PAL.COM’S OPPOSITION TO DEFENDANTS’ MOTION TO STAY PENDING
`THE OUTCOME OF EX PARTE REEXAMINATION REJECTING ALL ASSERTED
`CLAIMS
`
`
`
`

`

`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 2 of 18
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`II. BACKGROUND ................................................................................................................. 2
`
`III. LEGAL STANDARD ......................................................................................................... 4
`
`IV. ARGUMENT ...................................................................................................................... 5
`
`A. VoIP-Pal will be unduly prejudiced by a stay. ............................................................ 5
`
`1. The timing of Amazon’s Motion weighs against a stay. ............................................ 5
`2. VoIP Pal’s right to exclude will significantly be delayed. ......................................... 6
`3. The length of the reexamination process unduly prejudices VoIP-Pal. ...................... 7
`
`B. The Court has expended significant resources advancing this case. ........................... 8
`
`C. A stay will not significantly simplify the case before the Court ................................. 9
`
`V. CONCLUSION ................................................................................................................. 10
`
`
`
`i
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 3 of 18
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Affinity Labs of Texas, LLC v. Netflix, Inc.,
` No. 1:15- CV-849-RP, 2017 U.S. Dist. LEXIS 5928 (W.D. Tex. Jan. 17, 2017) ....................... 9
`
`
`Agis Software Dev. LLC v. Google LLC,
` No. 2:19-CV-00361-JRG, 2021 U.S. Dist. LEXIS 24195 (E.D. Tex. Feb. 9, 2021) ................. 10
`
`
`BarTex Research v. FedEx Corp.,
` 611 F. Supp. 2d 647 (E.D. Tex. 2009) ......................................................................................... 7
`
`
`CANVS Corp. v. U.S.,
` 118 Fed. Cl. 587 (2014) ............................................................................................................... 8
`
`
`Cellular Commc'ns Equip. LLC v. HTC Corp.,
` No. 16-CV-475-KNM, 2018 U.S. Dist. LEXIS 226652 (E.D. Tex. May 8, 2018) ..................... 8
`
`
`Clinton v. Jones,
` 520 U.S. 681 (1997) ..................................................................................................................... 4
`
`
`Eon Corp. IP Holdings, LLC v. Skytel Corp.,
` No. 6:08-CV-385, 2009 U.S.Dist. LEXIS 131909 (E.D. Tex. April 29, 2009) ............. 5, 6, 7, 10
`
`
`Gould v. Control Laser Corp.,
` 705 F.2d 1340 (Fed. Cir. 1983) .................................................................................................... 4
`
`
`Intell. Ventures I LLC v. TMobile USA, Inc.,
` No. 2:17-CV-00577-JRG, 2018 U.S. Dist. LEXIS 239587 (E.D. Tex. Dec. 13, 2018) .............. 6
`
`
`Intell. Ventures II LLC v. FedEx Corp.,
` No. 2:16-CV-980-JRG, 2017 U.S. Dist. LEXIS 176813 (E.D. Tex. Oct. 24, 2017) ................... 9
`
`
`Kahn v. Gen. Motors Corp.,
` 889 F.2d 1078 (Fed. Cir. 1989) .................................................................................................... 4
`
`
`
`
`
`
`ii
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`

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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 4 of 18
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`Kerr Mach. Co. v. Vulcan Indus. Holdings, LLC,
` No. 6-20-CV-00200-ADA, 2021 U.S. Dist. LEXIS 67384 (W.D. Tex. Apr. 7, 2021) ............... 8
`
`
`Luv N' Care, Ltd. v. Jackel Int'l Ltd., Civil Action
` No. 2:14-cv-00855-JRG, 2015 U.S. Dist. LEXIS 64225 (E.D. Tex. May 15, 2015) .................. 9
`
`
`MiMedx Grp., Inc. v. Tissue Transplant Tech. Ltd.,
` No. 14-CV-719, 2015 U.S. Dist. LEXIS 33388 (W.D. Tex. Jan 5, 2015) ................................... 6
`
`
`Multimedia Content Mgmt. LLC v. Dish Network L.L.C.,
` No. 6:18-CV-00207-ADA, 2019 U.S. Dist. LEXIS 236670 (W.D. Tex. May 30, 2019) ............ 4
`
`
`NFC Tech. LLC v. HTC Am., Inc.,
` No. 2:13-CV-1058, 2015 U.S. Dist. LEXIS 29573 (E.D. Tex. Mar. 11, 2015) ........................... 4
`
`
`Orion IP, LLC v. Mercedes-Benz, USA, LLC,
` No. 6:05-cv-322, 2008 U.S. Dist. LEXIS 103607 (E.D. Tex. Dec. 22, 2008) ............................. 7
`
`
`Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys.,
` No. 2:19-CV-00225-JRG, 2021 U.S. Dist. LEXIS 6779 (E.D. Tex. Jan. 13, 2021) ................. 10
`
`
`Realtime Data, LLC v. Rackspace US, Inc.,
` No. 6:16-CV-00961, 2017 U.S. Dist. LEXIS 27421 (E.D. Tex. Feb. 28, 2017) ......................... 4
`
`
`ROY-G-BIV Corp. v. FANUC Ltd.,
` No. 2:07-CV-418 (DF), 2009 U.S. Dist. LEXIS 69004 (E.D. Tex. Apr. 14, 2009) .................... 9
`
`
`Sonrai Memory Ltd. v. LG Elecs. Inc.,
` No. 6:21-CV-00168-ADA, 2022 U.S. Dist. LEXIS 112733 (W.D. Tex. June 27, 2022) ............ 6
`
`
`Sonrai Memory,
` 2022 U.S. Dist. LEXIS 112733 .................................................................................................... 8
`
`
`Soverain Software LLC v. Amazon.Com, Inc.,
` 356 F. Supp. 2d 660 (E.D. Tex. 2005) ..................................................................................... 4, 5
`
`
`Stormedia Texas, LLC v. CompUSA, Inc.,
` No. 2:07-cv-025, 2008 U.S. Dist. LEXIS 55690 (E.D. Tex. July 23, 2008) ............................... 7
`iii
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`

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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 5 of 18
`
`
`
`USC IP P’ship, L.P. v. Facebook, Inc.,
` No. 6-20-CV-00555-ADA, 2021 U.S. Dist. LEXIS 249095 (W.D. Tex. Aug. 5, 2021) ............. 6
`
`
`Vehicle IP, LLC v. Wal-Mart Stores, Inc.,
` No. 10-503-SLR, 2010 U.S. Dist. LEXIS 123493 ....................................................................... 8
`
`
`Vehicle IP, LLC v. Wal-Mart Stores, Inc.,
` No. 10-503-SLR, 2010 U.S. Dist. LEXIS 123493 (D. Del. Nov. 22, 2010) ................................ 7
`
`
`Videoshare, LLC v. Meta Platforms Inc.,
` No. 6-21-CV-00254-ADA, 2022 U.S. Dist. LEXIS 139421 (W.D. Tex. 2022) .......................... 9
`
`
`VirtualAgility Inc. v. Salesforce.com,
` 759 F.3d 1307 (Fed. Cir. 2014) .................................................................................................. 10
`
`
`YETI Coolers, LLC v. Home Depot U.S.A., Inc.,
` No. 1:17-CV-342-RP, 2018 U.S. Dist. LEXIS 2806 (W.D. Tex. Jan. 8, 2018) .......................... 5
`
`
`Rules
`
`Fed. R. Civ. P. 1 .............................................................................................................................. 4
`
`
`
`
`
`
`
`
`iv
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 6 of 18
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`TABLE OF ABBREVIATIONS
`
`ABBREVIATION
`
`TERM
`
`VoIP-Pal
`
`Amazon
`
`Defendants
`
`Plaintiff VoIP-Pal.com, Inc.
`
`
`
`Amazon.com, Inc., Amazon.com Services,
`
`LLC, and Amazon Web Services, Inc.
`
`
`
`Amazon
`
`
`
`The ’606 patent or the patent-in-suit
`
`U.S. Patent No. 10,218,606
`
`USPTO
`
`
`
`
`
`United States Patent and Trademark Office
`
`The Reexamination
`
`Reexamination No. 90/019,124
`
`
`
`Twitter
`
`Twitter, Inc.
`
`
`
`
`
`v
`
`
`
`

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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 7 of 18
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`I.
`
`INTRODUCTION
`The Court should deny Amazon’s Motion to Stay pending the outcome of an ex parte
`
`reexamination regarding the patent-in-suit because none of the factors that the Court may consider
`
`favor a stay. Twitter filed the Reexamination almost nine months ago on October 17, 2022.1
`
`Amazon had plenty of opportunities to move to stay this case based on the Reexamination.
`
`When the USPTO ordered reexamination on November 25, 2022, this case was stayed.2 When
`
`VoIP-Pal moved to lift the stay on January 19, 2023, Amazon never mentioned the Reexamination
`
`in its Opposition and never used it to urge the Court to continue the stay of the case. Amazon
`
`should have asked the Court to continue the stay back in January based on the Reexamination
`
`before the Court expended judicial resources in moving this case forward. Instead, Amazon waited
`
`for another six months after the Court lifted the stay to seek yet another stay. This time, Defendants
`
`attempt to use a non-final office action that was issued in the Reexamination that they did not file.
`
`During those six months, the parties and the Court have expended significant resources in moving
`
`this case forward.
`
`The three factors that the Court considers in determining whether a stay pending a USPTO
`
`proceeding is proper all weigh against a stay in this case. Regarding the first factor, VoIP-Pal will
`
`be unduly prejudiced by the stay because its ability to exercise its right to exclude will significantly
`
`be delayed by the lengthy reexamination process. Reexamination is an arduous process fraught
`
`with the potential for multiple appeals. The USPTO has only issued a non-final office action, and
`
`the VoIP-Pal still has an opportunity to respond. No final rejection has been issued, and there is
`
`no argument scheduled before the Board of Patent Appeals and Interferences.
`
`
`
`1 Ex. 1-2. All exhibits refer to exhibits to the Declaration of Lewis E. Hudnell, III.
`2 Ex. 3.
`
`1
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`

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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 8 of 18
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`Regarding the second factor, the Court has already expended significant resources in this
`
`case and so have the parties. This Court has conducted the Claim Construction Hearing, issued a
`
`Final Claim Construction Order, conducted a hearing on VoIP-Pal’s Motion for Reconsideration
`
`of the Court’s Final Claim Construction Order, and has modified its Final Claim Construction
`
`Order. The parties' and the Court's investment in this case would be wasted if the case is stayed
`
`yet again.
`
`Regarding the third factor, the Reexamination will not simplify the issues before this Court.
`
`The certificate of reexamination is unlikely to issue before trial. Moreover, based on statistics
`
`published by the USPTO, it is unlikely that all of the claims will be canceled. Thus, the ex parte
`
`reexamination may complicate issues by creating new issues. Further, ex parte reexamination
`
`proceedings have no estoppel effect. Thus, if the reexamination does not result in all of the claims
`
`being canceled, then the Court could be presented with the same invalidity arguments addressed
`
`by the USPTO. Accordingly, the Court should deny Amazon’s Motion to Stay.
`
`II.
`
`BACKGROUND
`VoIP-Pal first filed the Complaint on April 6, 2020.3 This case was first stayed on
`
`September 29, 2020 to allow the motions to dismiss in related cases that were pending then to be
`
`decided by their respective courts.4 On November 9, 2021, the Court lifted the first stay.5 On June
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`21, 2022, on the eve of a claim construction hearing, the Court stayed the case for the second time
`
`to allow for the resolution of motions to transfer in this case and two related cases.6 The Court
`
`denied Amazon’s motion to transfer on October 19, 2022.7
`
`
`
`3 See Dkt. No. 1.
`4 See Dkt. No. 47.
`5 See Dkt. No. 61.
`6 See Dkt. No. 77.
`7 See Dkt. No. 78.
`
`
`
`2
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`

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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 9 of 18
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`Because Amazon refused to agree to lift the stay even though the conditions for lifting the
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`stay had been satisfied, VoIP-Pal was forced to file a Motion to Lift the Stay.8 On January 27,
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`2023, the Court granted the motion, lifted the second stay, and set a claim construction hearing
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`date.9 The Court also ordered the parties to meet and confer regarding a proposed schedule based
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`on the claim construction hearing date.10
`
`The Court held a Claim Construction Hearing on February 15, 2023.11 VoIP-Pal provided
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`Amazon with a proposed schedule the same day.12 Almost two weeks later, Amazon provided its
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`edits to VoIP-Pal’s proposed schedule.13 But Amazon refused to agree to the entry of the schedule
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`because it believed that VoIP-Pal had no basis to assert infringement of the "routing message"
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`limitation, which the Court construed to mean "a message that includes a callee user name field, a
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`route field, and a time to live field."14 Amazon, however, did not assert that no schedule should
`
`be entered due to the Reexamination.
`
`Because Amazon refused to agree to the entry of the schedule, VoIP-Pal was forced to file
`
`a Motion for Reconsideration of the Court’s Final Claim Construction Order.15 VoIP-Pal also filed
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`a Motion for Entry of Scheduling Order Deadlines.16 The Court granted the Motion for
`
`Reconsideration and amended its Final Claim Construction Order.17 The Court also ordered the
`
`
`
`8 See Dkt. No. 79.
`9 See Dkt. No. 81.
`10 Id.
`11 See Dkt. No. 85.
`12 See Dkt. No. 90-2 at 4.
`13 Id. at 3; Dkt. No. 90-3.
`14 See Dkt. No. 90-2 at 2-3; Dkt. No. 87 at 2.
`15 See Dkt. No. 89.
`16 See Dkt. No. 90.
`17 See Dkt. No. 98.
`
`3
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 10 of 18
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`parties to work with the law clerk to complete a proposed scheduling order.18 The parties
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`submitted a Joint Motion for Entry of Scheduling Order Deadlines on June 26, 2023, which is the
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`first time that Amazon raised with the Court the issue of a stay pending the Reexamination.19
`
`III. LEGAL STANDARD
`The goal in all civil actions is to “secure the just, speedy, and inexpensive determination of
`
`every action and proceeding.”20 Towards that end, the Federal Circuit has long recognized a
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`“strong public policy favoring expeditious resolutions of litigation.”21
`
`A district court has the inherent power to control its docket, including the power to stay
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`proceedings before it.22 As is presently relevant, “the question whether to stay proceedings
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`pending [post grant] review of a patent is a matter committed to the district court’s discretion.”23
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`A stay may be justified when “the outcome of a PTO proceeding is likely to assist the court in
`
`determining patent validity or eliminate the need to try infringement issues.”24 “Nevertheless,
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`there is no per se rule that patent cases should be stayed pending PTO proceedings, because such
`
`a rule ‘would invite parties to unilaterally derail litigation.’”25
`
`
`
`18 See Dkt. No. 97.
`19 See Dkt. No. 99.
`20 See Fed. R. Civ. P. 1 (emphasis added).
`21 See Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1080 (Fed. Cir. 1989).
`22 See Clinton v. Jones, 520 U.S. 681, 706 (1997) (“The District Court has broad discretion to stay
`proceedings as an incident to its power to control its own docket.”).
`23 See Multimedia Content Mgmt. LLC v. Dish Network L.L.C., No. 6:18-CV-00207-ADA, 2019
`U.S. Dist. LEXIS 236670, at *3 (W.D. Tex. May 30, 2019) (citation omitted).
`24 See NFC Tech. LLC v. HTC Am., Inc., No. 2:13-CV-1058, 2015 U.S. Dist. LEXIS 29573, at *4
`(E.D. Tex. Mar. 11, 2015) (citing, inter alia, Gould v. Control Laser Corp., 705 F.2d 1340, 1342
`(Fed. Cir. 1983)).
`25 See Realtime Data, LLC v. Rackspace US, Inc., No. 6:16-CV-00961, 2017 U.S. Dist. LEXIS
`27421, at *6 (E.D. Tex. Feb. 28, 2017) (quoting Soverain Software LLC v. Amazon.Com, Inc., 356
`F. Supp. 2d 660, 662 (E.D. Tex. 2005)).
`
`4
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`
`

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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 11 of 18
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`“In deciding whether to stay litigation pending reexamination of a patent, courts primarily
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`consider three factors: 1) whether a stay will unduly prejudice or present clear tactical disadvantage
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`to the nonmoving party, 2) whether a stay will simplify the issues in question and the trial of the
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`case, and 3) whether discovery is complete and whether a trial date has been set”26. “The
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`proponent of a stay bears the burden of establishing its need.”27
`
`IV. ARGUMENT
`A. VoIP-Pal will be unduly prejudiced by a stay.
`1. The timing of Amazon’s Motion weighs against a stay.
`Twitter—a non-party to this action—filed the request for reexamination on October 17,
`
`2022. The USPTO granted the reexamination request on November 25, 2022.28 At that time, this
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`case was stayed.29 In opposing VoIP-Pal’s motion to lift the stay, Amazon never mentioned
`
`anything about the Reexamination.30 Instead, Amazon waited almost nine months to file. In those
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`nine months, VoIP-Pal and the Court have expended significant resources advancing this case.
`
`The Court conducted a Claim Construction Hearing and issued a Final Claim Construction Order.31
`
`The Court also conducted a hearing on VoIP Pal’s Motion for Reconsideration of the Final Claim
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`Construction Order and issued an Amended Final Claim Construction Order.32 These expenditures
`
`of party and court resources could have been averted if Amazon had sought a stay sooner. Now,
`
`
`
`26 See Eon Corp. IP Holdings, LLC v. Skytel Corp., No. 6:08-CV-385, 2009 U.S. Dist. LEXIS
`131909 at *11 (E.D. Tex. April 29, 2009) (quoting Soverain Software, 356 F. Supp. 2d at 662).
`27 See YETI Coolers, LLC v. Home Depot U.S.A., Inc., No. 1:17-CV-342-RP, 2018 U.S. Dist.
`LEXIS 2806, at *2 (W.D. Tex. Jan. 8, 2018) (citations omitted).
`28 Ex. 2.
`29 See Dkt. No. 77.
`30 See Dkt. No. 80.
`31 See Dkt. No. 87.
`32 See Dkt. No. 98.
`
`5
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 12 of 18
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`VoIP-Pal will be unduly prejudiced by a stay because the resources that it expended to reach this
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`stage of the litigation will be wasted.
`
`2. VoIP Pal’s right to exclude will significantly be delayed.
`VoIP-Pal will further be unduly prejudiced by a stay because its ability to exercise its patent
`
`right to exclude will significantly be delayed. There is no general rule that says non-practicing
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`entities could not suffer undue prejudice from a stay, as Amazon appears to suggest. Courts have
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`ruled in favor of non-practicing entities and found that they would be unduly prejudiced if their
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`cases are stayed. 33 Indeed, VoIP-Pal has an interest in the timely enforcement of its patent rights.34
`
`This factor is given some weight, even if it is not dispositive.35 This factor is given some weight,
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`even if only monetary relief is sought.36
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`Non-practicing entities also may still be entitled to a permanent injunction, even though it
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`does not practice its patents. 37 While VoIP-Pal will be able to collect damages for infringement
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`occurring during the stay proposed by Amazon, VoIP-Pal may still suffer from irreparable harm
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`during that time. Like the non-practicing entities in Eon Corp. IP Holdings, LLC, VoIP-Pal will
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`be unduly prejudiced by a stay because the reexamination process is extremely time-consuming.
`
`Should Amazon be found to infringe the patent-in-suit, damages alone may not fully compensate
`
`
`
`33 See, e.g., Eon, 2009 U.S. Dist. LEXIS 131909.
`34 See Sonrai Memory Ltd. v. LG Elecs. Inc., No. 6:21-CV-00168-ADA, 2022 U.S. Dist. LEXIS
`112733, at *5 (W.D. Tex. June 27, 2022).
`35 See Intell. Ventures I LLC v. TMobile USA, Inc., No. 2:17-CV-00577-JRG, 2018 U.S. Dist.
`LEXIS 239587, at *6 (E.D. Tex. Dec. 13, 2018) (“It is well established that Plaintiff’s timely
`enforcement of its patent rights is entitled to some weight, even if that factor is not dispositive.”).
`36 See USC IP P’ship, L.P. v. Facebook, Inc., No. 6-20-CV-00555-ADA, 2021 U.S. Dist. LEXIS
`249095, at *3-4 (W.D. Tex. Aug. 5, 2021) (“[T]he Court has noted that ‘[a] patent holder has an
`interest in the timely enforcement of its patent right,’ even when the patent holder has only sought
`monetary relief.”) (quoting MiMedx Grp., Inc. v. Tissue Transplant Tech. Ltd., No. 14-CV-719,
`2015 U.S. Dist. LEXIS 33388, at *4 (W.D. Tex. Jan 5, 2015)).
`37 Eon, 2009 U.S. Dist. LEXIS 131909, at *16-*17 (citations omitted).
`6
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 13 of 18
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`VoIP-Pal for a lengthy delay in exercising its right to exclude. “The right to exclude, even for a
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`non-practicing entity, may be the only way to fully vindicate the patentee’s ownership in the
`
`patent.”38
`
`3. The length of the reexamination process unduly prejudices VoIP-Pal.
`Amazon argues that any harm VoIP-Pal might suffer from a stay would be minimal because
`
`(1) they claim that the ex parte reexamination is expected to be completed before the May 2024
`
`trial date that VoIP-Pal has requested in this case and (2) because VoIP-Pal is delaying the
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`resolution of the ex parte reexamination by requesting an extension to file a response to the non-
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`final office action. Amazon, however, fails to inform the Court that the one-month extension of
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`time that VoIP-Pal requested pales in comparison to the entire reexamination process, which, when
`
`considering any appeal, can take years to complete.39 Indeed, according to statistics published by
`
`the USPTO, an ex parte reexamination conducted has a historical average pendency of 25.7
`
`months.40 Based on this data, contrary to what Amazon claims, the USPTO would not issue a
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`reexamination certificate until after VoIP-Pal’s proposed trial date. Moreover, in cases like this
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`one where the USPTO has only issued an office action, the patent owner has not responded to the
`
`
`
`38 Id.
`39 See BarTex Research v. FedEx Corp., 611 F. Supp. 2d 647, 651 (E.D. Tex. 2009); Orion IP,
`LLC v. Mercedes-Benz, USA, LLC, No. 6:05-cv-322, 2008 U.S. Dist. LEXIS 103607, at *23 (E.D.
`Tex. Dec. 22, 2008 (noting that the reexamination procedure, in conjunction with a possible appeal
`to the Board of Patent Appeals and Interferences, “could take years”); Stormedia Texas, LLC v.
`CompUSA, Inc., No. 2:07-cv-025, 2008 U.S. Dist. LEXIS 55690, at *6 (E.D. Tex. July 23, 2008)
`(noting that USPTO has not provided guidance on length of time required for reexaminations and
`therefore the “potential delay for an indefinite period would likely prejudice [the plaintiff]”); see
`also Vehicle IP, LLC v. Wal-Mart Stores, Inc., No. 10-503-SLR, 2010 U.S. Dist. LEXIS 123493,
`at *6 (D. Del. Nov. 22, 2010)(“[R]eexamination is an arduous process fraught with the potential
`for multiple appeals.”).
`40 See www.uspto.gov/sites/default/files/documents/ex_parte_historical_stats_roll_up_21Q1.pdf
`(last visited July 14, 2022).
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`7
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 14 of 18
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`office action, no final rejection has been issued, and no argument is scheduled before the Board of
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`Patent Appeals and Interferences, the court has held that the status of the reexamination weighs
`
`against a stay.41
`
`This case has already been pending for over three years. If this case is stayed pending the
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`outcome of the reexamination including appeal, then VoIP-Pal may not be able to enforce its patent
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`rights for another two years. For VoIP-Pal to have to wait for a total of five years before it can
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`exercise its right to exclude Amazon is unduly prejudicial to VoIP-Pal. For all the above reasons,
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`this factor weighs against a stay.
`
`B. The Court has expended significant resources advancing this case.
`This case has been pending for over three years and has already been stayed twice. The
`
`Court has expended significant resources in conducting a Claim Construction Hearing, issuing a
`
`Final Claim Construction Order, conducting a hearing on a Motion for Reconsideration of the
`
`Final Claim Construction Order, and issuing an Amended Final Claim Construction Order. “If
`
`‘the court has expended significant resources, then courts have found that this factor weighs
`
`against a stay.’”42 “[T]his Court has expended considerable time and effort to get this case
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`resolved – to stay the case now would squander those efforts.”43 Thus, the stage of the litigation
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`factor militates against staying this action.
`
`
`
`41 Vehicle IP, LLC v. Wal-Mart Stores, Inc., No. 10-503-SLR, 2010 U.S. Dist. LEXIS 123493, at
`*6.
`42 See USC IP P’ship, 2021 U.S. Dist. LEXIS 249095, at *4 (quoting CANVS Corp. v. U.S., 118
`Fed. Cl. 587, 595 (2014)).
`43 See Kerr Mach. Co. v. Vulcan Indus. Holdings, LLC, No. 6-20-CV-00200-ADA, 2021 U.S. Dist.
`LEXIS 67384, at *9 (W.D. Tex. Apr. 7, 2021); see also, e.g., Sonrai Memory, 2022 U.S. Dist.
`LEXIS 112733, at *6 (denying stay with discovery set to close in three months and the court having
`resolved several motions); see also Cellular Commc'ns Equip. LLC v. HTC Corp., No. 16-CV-
`475-KNM, 2018 U.S. Dist. LEXIS 226652, at *9 (E.D. Tex. May 8, 2018) (denying stay with less
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 15 of 18
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`C. A stay will not significantly simplify the case before the Court
`A stay will not significantly simplify the case before the Court because, as noted above,
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`the case will likely reach trial before the reexamination certificate issues. In a similar case, the
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`Court has not only denied a motion to stay pending the outcome of an ex parte reexamination; but
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`the Court also reaffirmed its decision because it found that the reexamination decision will not
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`arrive in time to simplify any issues for trial.44
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`A stay also will not simplify the case before the Court because it is unlikely that all the
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`claims will be canceled. According to statistics published by the USPTO, an ex parte
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`reexamination filed by a third-party requestor results in the cancellation of all of the claims in only
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`14.2% of cases.45 In cases where the claims are confirmed or changed, an ex parte reexamination
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`may complicate issues by creating additional prosecution history estoppel and disavowal
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`arguments.46 Amazon even admits that changing the claims will require the parties to re-litigate
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`certain issues in the case.47 But new issues such as intervening rights and new claim construction
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`proceedings, which the Court is well-equipped to handle, do not simplify the case.48 Further, ex
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`
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`than a year until trial); see also Intell. Ventures II LLC v. FedEx Corp., No. 2:16-CV-980-JRG,
`2017 U.S. Dist. LEXIS 176813, *7-8 (E.D. Tex. Oct. 24, 2017) (denying stay when parties had
`briefed claim construction and trial was set in about seven months); see also Affinity Labs of Texas,
`LLC v. Netflix, Inc., No. 1:15- CV-849-RP, 2017 U.S. Dist. LEXIS 5928, at *2-3 (W.D. Tex. Jan.
`17, 2017) (denying stay when “parties [had] engaged in discovery and retained experts” and the
`“claim construction process [was] nearing completion”).
`44 See Videoshare, LLC v. Meta Platforms Inc., No. 6-21-CV-00254-ADA, 2022 U.S. Dist. LEXIS
`139421, at *4 (W.D. Tex. 2022).
`45 See www.uspto.gov/sites/default/files/documents/ex_parte_historical_stats_roll_up_21Q1.pdf
`(last visited July 14, 2022).
`46 See ROY-G-BIV Corp. v. FANUC Ltd., No. 2:07-CV-418 (DF), 2009 U.S. Dist. LEXIS 69004,
`at *8 (E.D. Tex. Apr. 14, 2009).
`47 Dkt. No. 100 at 3.
`48 See Luv N' Care, Ltd. v. Jackel Int'l Ltd., Civil Action No. 2:14-cv-00855-JRG, 2015 U.S. Dist.
`LEXIS 64225, at *8-*9 (E.D. Tex. May 15, 2015).
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 16 of 18
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`parte reexamination proceedings have no estoppel effect.49 Thus, if the reexamination results in
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`not all of the claims being canceled, then the Court could be presented with the same invalidity
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`arguments addressed by the USPTO.50 Thus, waiting for the lengthy reexamination process to
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`complete may have limited benefit.51
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`Amazon relies on VirtualAgility Inc. v. Salesforce.com, Inc. to support its argument that the
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`stay will simplify the case before the court. That case, however, involved CBM review and was
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`not an ex parte reexamination filed by a non-party.52 In addition to VirtualAgility, the other cases
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`that Amazon relies on—Agis Software Dev. LLC v. Google LLC, No. 2:19-CV-00361-JRG, 2021
`
`U.S. Dist. LEXIS 24195 (E.D. Tex. Feb. 9, 2021) and Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys.,
`
`No. 2:19-CV-00225-JRG, 2021 U.S. Dist. LEXIS 6779 (E.D. Tex. Jan. 13, 2021)—are all
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`distinguishable from this case because Agis Software Dev. LLC v. Google LLC involves Inter
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`Partes Review, not an ex parte reexamination requested by a third party. Additionally, the court
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`in those cases had not conducted a claim construction hearing or issued a final claim construction
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`order. Furthermore, Ramot at Tel Aviv Univ. Ltd. does not address whether the reexamination
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`decision will issue before the trial date.
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`For the foregoing reasons, this factor militates against staying these actions.
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`V.
`
`CONCLUSION
`In conclusion, because every applicable factor militates against a stay in this case, the Court
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`should deny Amazon’s Motion.
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`
`
`49 See Eon, 2009 U.S. Dist. LEXIS 131909, at *21.
`50 Id.
`51 Id.
`52 See VirtualAgility Inc. v. Salesforce.com, 759 F.3d 1307 (Fed. Cir. 2014).
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 17 of 18
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`Dated: July 14, 2023
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`Respectfully submitted,
`
`
`
`
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`
`
`
`
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`
`
`/s/Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@hudnelllaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
`
`Sean Franklin Parmenter
`sean@parmenterip.com
`Parmenter Intellectual Property Law,
`PLLC
`8980 N Pine Hollow Drive
`Cedar Hills, Utah 84062
`T: 925.482.6515
`
`ATTORNEYS FOR PLAINTIFF
`VOIP-PAL.COM, INC.
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`Case 6:20-cv-00272-ADA Document 101 Filed 07/14/23 Page 18 of 18
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served with a copy of the forgoing VoIP-PAL’S OPPOSITION TO
`DEFENDANTS’ MOTION TO STAY PENDING THE OUTCOME OF EX PARTE
`REEXAMINAITON REJECTING ALL ASSERTED CLAIMS via the Court's CM/ECF
`system under the Federal Rules of Civil Procedure and Local Rule CV-5(b)(1) this 14th day of July
`2023.
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`
`
`
`
`By: /s/Lewis E. Hudnell, III
`Lewis E. Hudnell, III
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