Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 1 of 13
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`SMART MOBILE TECHNOLOGIES
`LLC,
` Plaintiff,
`
`v.
`
`APPLE INC.,
` Defendant.
`
`
`SMART MOBILE TECHNOLOGIES
`LLC,
` Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
` Defendants.
`
`
`6:21-cv-00603-ADA
`
`6:21-CV-00701-ADA
`
`
`ORDER DENYING DEFENDANTS’ OPPOSED MOTION
`TO STAY PENDING INTER PARTES REVIEW
`
`Before the Court is Defendants Apple Inc. (“Apple”), Samsung Electronics Co., Ltd., and
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`Samsung Electronics America, Inc.’s (collectively, “Samsung”) Opposed Motion to Stay Pending
`
`Resolution of Inter Partes Review of the Asserted Patents filed on February 17, 2023 (the
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`“Motion”). Case No. 6:21-cv-603, ECF No. 99; Case No. 6:21-cv-701, ECF No. 88. Plaintiff Smart
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`Mobile Technologies LLC (“Smart Mobile”) filed an opposition to this Motion on March 3, 2023.
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`Case No. 6:21-cv-603, ECF No. 110; Case No. 6:21-cv-701, ECF No. 96. Defendants filed a reply
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`in support of their Motion on March 10, 2023. Case No. 6:21-cv-603, ECF No. 111; Case No.
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`1
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`

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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 2 of 13
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`6:21-cv-701, ECF No. 97.1 After careful consideration of the Motion, the parties’ briefing, and the
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`applicable law, the Court DENIES Defendants’ Opposed Motion to Stay Pending Resolution of
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`Inter Partes Review of the Asserted Patents.
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`I. BACKGROUND
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`Smart Mobile filed suit against Apple on June 11, 2021. Case No. 6:21-cv-603, ECF No.
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`1. In its case against Apple, Smart Mobile alleges that Apple infringes U.S. Patent Nos. 8,442,501
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`(the “’501 patent”), 8,472,936 (the “’936 patent”), 9,472,937 (the “’937 patent”), 8,761,739 (the
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`“’739 patent”), 8,824,434 (the “’434 patent”), 8,842,653 (the “’653 patent”), 8,982,863 (the “’863
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`patent”), 9,019,946 (the “’946 patent”), 9,049,119 (the “’119 patent”), 9,191,083 (the “’083
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`patent”), 9,319,075 (the “’075 patent”), 9,614,943 (the “’943 patent”), and 9,756,168 (the “’168
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`patent”) (collectively, the “Apple asserted patents”). Id. ¶ 1−15. Smart Mobile filed suit against
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`Samsung on July 1, 2021. Case No. 6:21-cv-701, ECF No. 1. Smart Mobile alleges that Samsung
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`infringes the ’501, ’936, ’937, ’739, ’434, ’653, ’946, ’119, ’083, ’943, and ’168 patents and U.S.
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`Patent No. 9.084,291 (the “’291 patent”) (collectively, the “Samsung asserted patents”). Id. ¶ 1−14.
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`On April 5, 2022, Apple and Samsung filed a petition to the Patent Trial and Appeal Board
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`(“PTAB”) for Inter Partes Review (“IPR”) of the ’434 patent; IPR was instituted on October 26,
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`2022. ECF No. 99 at 3; ECF No. 99-6. On April 6, 2022, Apple and Samsung filed an IPR petition
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`for the ’501 patent, which was instituted on September 29, 2022. ECF No. 99 at 3; ECF No. 99-3.
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`Also on April 6, 2022, Apple and Samsung filed an IPR petition for the ’168 patent, which was
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`instituted on October 25, 2022. ECF No. 99 at 3; ECF No. 99-5. On May 9, 2022, Apple and
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`Samsung filed IPR petitions for the ’119, ’739, ’936, and ’937 patents; all four IPRs were instituted
`
`
`1 All subsequent citations to the briefing refer to the filing numbers in Smart Mobile Techs. v. Apple Inc., Case No.
`6:21-cv-603, unless the citation states otherwise.
`
`2
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`

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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 3 of 13
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`on December 5, 2022. ECF No. 99 at 3; ECF Nos. 99-9, 99-10, 99-11, 99-13. On May 19, 2022,
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`Apple and Samsung filed an IPR petition for the ’943 patent, which was instituted on December
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`5, 2022. ECF No. 99 at 3; ECF No. 99-7. On May 23, 2022, Apple and Samsung filed IPR petitions
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`for the ’291 and ’083 patents; IPRs on both patents were instituted on December 5, 2022. ECF No.
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`99 at 3; ECF Nos. 99-7, 99-12. On July 1, 2022, Apple and Samsung filed an IPR petition for the
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`’863 patent, which was instituted on January 24, 2023. ECF No. 99 at 3−4; ECF No. 99-16. On
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`July 6, 2022, Samsung and Apple filed IPR petitions for the ’653 and ’946 patents, which were
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`both instituted on January 24, 2023. ECF No. 99 at 3−4; ECF Nos. 99-14, 99-15. Also on July 6,
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`2022, Apple filed an IPR petition for the ’075 patent. ECF No. 99 at 3. The PTAB denied institution
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`on the ’075 patent on January 30, 2023. ECF No. 99-4.
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`The Markman hearing for these cases is scheduled for August 17, 2023, ECF No. 125, and
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`fact discovery opens on August 25, 2023, ECF No. 127. On February 17, 2023, Apple and
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`Samsung filed the instant Motion seeking a stay of these actions pending final resolution of the
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`IPR proceedings. ECF No. 99. The PTAB is expected to issue final written decisions (“FWDs”)
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`on IPRs on or before January 31, 2024. Id. at 4. And this Court, in accordance with its default
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`scheduling order, has set trial for November 7, 2024. ECF No. 127.
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`II. LEGAL STANDARD
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`“District courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay will
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`likely result in simplifying the case before the court.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-
`
`cv-1058, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015); see also CyWee Grp. Ltd. V.
`
`3
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`

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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 4 of 13
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`Samsung Elecs. Co., No. 2:17-CV-00140-WCB-RSP, 2019 WL 11023976, at *2 (E.D. Tex. Feb.
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`14, 2019) (Bryson, J.).
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`A.
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`Undue Prejudice to the Non-moving Party
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`III. ANALYSIS
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`The Court finds that a stay would inflict undue prejudice upon non-movant Smart Mobile
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`for at least the following two reasons.
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`First, a stay risks the loss of testimonial and documentary evidence potentially valuable to
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`Smart Mobile’s case. See Allvoice Developments US, LLC v. Microsoft Corp., No. 6:09-CV-366,
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`2010 WL 11469800, at *4 (E.D. Tex. June 4, 2010) (holding that a stay of ten months would
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`“create a substantial delay that could cause prejudice by preventing Plaintiff from moving forward
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`with its infringement claims and by risking the loss of evidence as witnesses become unavailable
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`and memories fade”); Allure Energy, Inc. v. Nest Labs, Inc., No. 9-13-CV-102, 2015 WL
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`11110606, at *1 (E.D. Tex. Apr. 2, 2015); Anascape, Ltd. v. Microsoft Corp., 475 F. Supp. 2d 612,
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`617 (E.D. Tex. 2007) (holding that delay also risks making witnesses harder to find).
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`Some factors may diminish this risk, like where the requested stay is of a brief and definite
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`duration. Defendants do not clearly state whether they request the stay to extend to the conclusion
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`of the appeals of all thirteen IPRs. ECF No. 99-21. If the requested stay extends to the conclusion
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`of any appeals from the thirteen IPRs, the stay will almost certainly drag on for the better part of
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`a year after the FWDs. See Multimedia Content Mgmt. LLC v. Dish Network, No. 6:18-CV-00207-
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`ADA, 2019 U.S. Dist. LEXIS 236670, at *5 (W.D. Tex. May 30, 2019) (noting the length of appeal
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`and the statutory scheme’s provision for delaying a FWD by six months if necessary).
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`The risk is less pronounced where the proceeding-to-be-stayed and the parallel proceeding
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`implicate discovery of a similar scope and evidence in the latter can later be used in the former.
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`Cf. Kirsch Research & Dev., LLC v. BlueLinx Corp., No. 6:20-cv-00316-ADA, 2021 U.S. Dist.
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`4
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 5 of 13
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`LEXIS 191694, at *12 (W.D. Tex. Oct. 4, 2021) (suggesting that a manufacturer suit may preserve
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`evidence relevant to a customer’s suit). These factors are typically not implicated in motions to
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`stay pending IPR because IPRs have limited scope—only patentability based on published prior
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`art—and even more limited discovery. See 35 U.S.C. § 311(b) (providing the limited scope of
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`patentability challenges in an IPR petition); 37 C.F.R. § 42.51 (providing the limited scope of
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`discovery in IPR proceedings).
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`The second reason a stay may unduly prejudice Smart Mobile is that Smart Mobile, like
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`all patentees, has an interest in the timely enforcement of its patent rights. See Kirsch Research &
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`Dev., LLC v. Tarco Specialty Products, Inc., No. 6:20-CV-00318-ADA, 2021 WL 4555804, at *2
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`(W.D. Tex. Oct. 4, 2021) (citing MiMedx Group, Inc. v. Tissue Transplant Tech. Ltd., No. SA-14-
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`CA-719, 2015 WL 11573771, at *2 (W.D. Tex. Jan 5, 2015)). The Federal Circuit has long held
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`that “[r]ecognition must be given to the strong public policy favoring expeditious resolution of
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`litigation.” Kahn v. GMC, 889 F.2d 1078, 1080 (Fed. Cir. 1989); see also United States ex rel.
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`Gonzalez v. Fresenius Med. Care N. Am., 571 F. Supp. 2d 758, 763 (W.D. Tex. 2008) (“[T]he
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`compensation and remedy due a civil plaintiff should not be delayed.” (quoting Gordon v. FDIC,
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`427 F.2d 578, 580 (D.C. Cir. 1970))). Congress has recognized as much, establishing the PTAB
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`to provide a forum for the “quick” resolution of patent disputes. See, e.g., Ethicon Endo-Surgery,
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`Inc. v. Covidien LP, 826 F.3d 1366, 1367 (Fed. Cir. 2016). The impact of this interest is diminished
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`here because: (1) the PTAB is expected to issue the FWDs before this Court is scheduled to try
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`this case; and (2) a stay “would merely delay Plaintiff's potential monetary recovery.”2 Kirsch
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`2 Smart Mobile’s Complaint states that it seeks injunctive relief. ECF No. 1 ¶ 16. However, Smart Mobile has not
`moved for a preliminary injunction, and it does not presently sell any commercial products. The Court also notes that
`seeking only monetary relief does not mean that a stay would not prejudice a plaintiff whatsoever.
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`5
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 6 of 13
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`Rsch. & Dev., LLC v. Tarco Specialty Prod., Inc., No. 6:20-CV-00318-ADA, 2021 WL 4555804,
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`at *2 (W.D. Tex. Oct. 4, 2021).
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`Given the foregoing, this factor slightly weighs against granting a stay.
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`B.
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`Stage of the Proceedings
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`The stage of these actions weighs slightly against granting a stay. “[I]f protracted and
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`expansive discovery has already occurred, or the court has expended significant resources, then
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`courts have found that this factor weighs against a stay.” CANVS Corp. v. United States, 118 Fed.
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`Cl. 587, 595 (2014). Here, the Court has overseen venue discovery in this case. ECF Nos. 41, 59,
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`74. The Markman hearing is set for August 17, 2023, and the parties have completed claim
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`construction briefing. ECF Nos. 125, 46−48, 66−68, 79−81, 87−89, 114, 115, 117. Trial has been
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`set for November 7, 2024. ECF No. 127.
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`Given the foregoing, this factor weighs slightly against granting a stay.
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`C.
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`Simplification of Issues
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`Finally, the Court considers whether a stay will simplify the issues in these actions. This is
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`the “most important factor” in the stay analysis. Tarco, 2021 WL 4555804, at *3 (citing NFC
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`Tech., 2015 WL 1069111, at *4). Under this factor, the Court will typically weigh: (1) the scope
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`of estoppel the movants are bound by and (2) the strength of the relevant IPR petitions in the
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`context of the asserted claims. As a general matter, the PTAB’s suggestion that an IPR petition
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`contains strong grounds for invalidating all the asserted claims, combined with the movant’s
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`acceptance of a broad estoppel, suggests that a stay would simplify issues.
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`1. Scope of Estoppel Attaching to Apple and Samsung
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`Section 315(e) of Title 35 subjects IPR petitioners to estoppel once the PTAB issues a
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`FWD. Apple and Samsung will be estopped from asserting in district court that the claims the
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`PTAB subjected to IPR are invalid over the combinations instituted upon and any grounds Apple
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`6
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 7 of 13
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`and Samsung reasonably could have asserted against those claims in its IPR petitions. See Cal.
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`Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022). This is a fairly broad estoppel.
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`2. Strength of Apple and Samsung’s IPR Petitions
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`The degree to which these cases will be simplified is a function of not just the scope of
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`estoppel attached to Apple and Samsung, but also how many asserted claims will likely survive
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`the FWDs. The Court notes that not all of the asserted claims in the Apple case are subject to IPR.
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`The PTAB denied institution of Apple’s IPR on the ’075 patent. ECF No. 99-4. Thus, regardless
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`of the outcome of the IPRs, four asserted claims from the ’075 patent will still need to be resolved
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`by this Court. Assuming the thirteen IPRs reach FWDs, there are only three outcomes relevant for
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`our purposes: (1) all the challenged claims fall; (2) all the challenged claims survive; or (3) some
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`of the challenged claims survive.
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`As to the first outcome, it is undoubtedly true that FWDs judging all the challenged claims
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`unpatentable would dispose of the Samsung Action (assuming Samsung and Apple can defend
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`their victory on appeal). See Tarco, 2021 WL 4555804, at *3. But even if Apple and Samsung
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`prevailed on all of the instituted IPRs, the Apple Action would persist because the PTAB did not
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`institute IPR on the asserted ’075 patent. As to the second outcome, such a result would narrow
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`the universe of prior art asserted before this Court, but it would still permit Apple and Samsung to
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`take another bite at the invalidity apple. Estoppel under § 315(e) is broad but would not foreclose
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`Apple and Samsung from arguing that the challenged claims are invalid over system prior art or
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`applicant admitted prior art (“AAPA”)—maybe even combined with prior art publications used in
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`the IPRs. It is unclear how forcing the defendant to rely on other prior art for its invalidity case
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`constitutes a “simplification” of the invalidity issue as opposed to simply a second chance to
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`invalidate the asserted claims with art that may be better than what the defendant could submit to
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`the PTAB. See USC IP P’ship, L.P. v. Facebook, Inc., No. 6-20-CV-00555-ADA, 2021 WL
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`7
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 8 of 13
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`6201200, at *2 (W.D. Tex. Aug. 5, 2021). Further, Apple would still be able to challenge the
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`asserted claims of the ’075 patent on the entire universe of prior art. See Intuitive Surgical, Inc. v.
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`Ethicon LLC, 25 F.4th 1035, 1041 (Fed. Cir. 2022) (“The plain language of § 315(e)(1) is clear
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`that estoppel is triggered when an IPR proceeding results in a final written decision.”). It is
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`unlikely, then, that these actions would be much simplified where the IPRs leaves all challenged
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`claims unscathed. The third outcome, in which only some claims survive, is an improvement upon
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`the second in that it would narrow not only the universe of prior art, but also the number of asserted
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`claims. As with the second outcome, it would still permit Apple and Samsung to put on an
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`invalidity case under §§ 102 or 103.
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`To better gauge what outcome to expect from the FWDs, and therefore what degree of
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`simplification to expect from a stay, the Court looks to the relevant institution decisions. For this
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`factor to favor granting a stay, the movant “must show more than a successful petition, they must
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`show that the PTAB is likely to invalidate every asserted claim.” Tarco, 2021 WL 4555804, at *3
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`(quoting Scorpcast v. Boutique Media, No. 2:20-cv-00193-JRG-RSP, 2021 WL 3514751, at *3
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`(E.D. Tex. June 7, 2021)).
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`Apple and Samsung have eight seemingly strong IPR petitions. The PTAB instituted IPR
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`proceedings against every asserted claim of the ’501 patent, including claims 1−3, 5−6, 10, 13,
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`and 16−18. ECF No. 99-3 at 2. For all of the challenged claims, the PTAB determined that Apple
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`and Samsung had shown a reasonable likelihood that they would prevail in establishing the
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`unpatentability of these claims. Id. at 35−37. The PTAB instituted IPR proceedings against every
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`asserted claim of the ’168 patent, including claims 2−5, 19−23, 25, 28−29, and 34. ECF No. 99-5
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`at 2. For all of the challenged claims, the PTAB determined that Apple and Samsung had shown a
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`reasonable likelihood that they would prevail in establishing the unpatentability of these claims.
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`8
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 9 of 13
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`Id. at 29, 33, 35, 38, 40, 42. The PTAB instituted IPR proceedings against every asserted claim of
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`the ’434 patent, including claims 1−8. ECF No. 99-6 at 2. For claims 1−8, the PTAB determined
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`that Apple and Samsung had shown a reasonable likelihood that they would prevail in establishing
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`the unpatentability of these claims. Id. at 14, 16, 18, 25. The PTAB instituted IPR proceedings
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`against every asserted claim of the ’943 patent, including claims 1−2, 5−9, and 12−20. ECF No.
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`99-7 at 2. For all of the challenged claims, the PTAB determined that Apple and Samsung had
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`shown a reasonable likelihood that they would prevail in establishing the unpatentability of these
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`claims. Id. at 24, 33−34, 35−36, 41, 45, 49, 60, 67−68, 70. The PTAB instituted IPR proceedings
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`against every asserted claim of the ’083 patent, including claims 1, 5−9, 12, and 13−20. ECF No.
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`99-8 at 2−3. For all of the challenged claims, the PTAB determined that Apple and Samsung had
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`shown a reasonable likelihood that they would prevail in establishing the unpatentability of these
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`claims. Id. at 12. The PTAB instituted IPR proceedings against the sole asserted claim of the ’119
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`patent, claim 20. ECF No. 99-9. The PTAB determined that Apple and Samsung had shown a
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`reasonable likelihood that they would prevail in establishing the unpatentability of claim 20. Id. at
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`36. The PTAB instituted IPR proceedings against all of the asserted claims of the ’291 patent,
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`including claims 1−16. ECF No. 99-12 at 2. For all of the challenged claims, the PTAB determined
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`that Apple and Samsung had shown a reasonable likelihood that they would prevail in establishing
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`the unpatentability of these claims. Id. at 32, 39, 45, 47. The PTAB instituted IPR proceedings
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`against all of the asserted claims of the ’863 patent, including claims 1−6, 8−9, 11−12, 14, 19, and
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`24. ECF No. 99-16 at 2. For all of the challenged claims, the PTAB determined that Apple and
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`Samsung had shown a reasonable likelihood that they would prevail in establishing the
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`unpatentability of these claims. Id. at 17, 21, 23−24, 26, 29.
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`9
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 10 of 13
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`But a few of Apple and Samsung’s IPR petitions have questionable strength because the
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`PTAB did not reach a determination on Apple and Samsung’s likelihood of prevailing for all of
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`the asserted claims. The PTAB instituted IPR proceedings against all of the asserted claims of the
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`’739 patent, including claims 1−3, 5−6, 10, 13, and 16−18. ECF No. 99-10 at 2. For independent
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`claim 1, the PTAB determined that Apple and Samsung had shown a reasonable likelihood that
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`they would prevail in establishing the unpatentability of these claims. Id. at 42, 59−60. But for
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`claims 2, 3, 5, 6, 10, 13, and 16−18, the PTAB did not determine whether Apple and Samsung had
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`shown a reasonable likelihood that they would prevail. Id. at 42−43, 60. Similarly, the PTAB
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`instituted IPR proceedings against all of the asserted claims of the ’936 patent, including claims 1,
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`8−11, 13, 15, 17, and 19. ECF No. 99-11 at 2. For independent claim 1, the PTAB determined that
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`Apple and Samsung had shown a reasonable likelihood that they would prevail in establishing the
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`unpatentability of these claims. Id. at 37, 56. But for claims, 8−11, 13, 15, 17, and 19, the PTAB
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`did not determine whether Apple and Samsung had shown a reasonable likelihood that they would
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`prevail. Id. The PTAB instituted IPR proceedings against all of the asserted patents of the ’937
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`patent, including claims 1−3, 5−6, 10, 13, and 16−18. ECF No. 99-13 at 2. For independent claim
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`1, the PTAB determined that Apple and Samsung had shown a reasonable likelihood that they
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`would prevail in establishing the unpatentability of these claims. Id. at 31−32, 49. But for claims
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`2−3, 5-6, 10, 13, and 16−18, the PTAB did not determine whether Apple and Samsung had shown
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`a reasonable likelihood that they would prevail. Id. at 32, 49.
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`And not all of Apple and Samsung’s IPR petitions fared well. The PTAB denied IPR
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`proceedings for the ’075 patent. ECF No. 99-4. The PTAB concluded that Apple had failed to
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`demonstrate a reasonable likelihood of showing unpatentability of at least one of the challenged
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`claims. Id. at 2. The PTAB instituted IPR proceedings for all of the asserted claims of the ’653
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`10
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`patent, including claims 1−21, and 23−30. ECF No. 99-14. For independent claims 14 and 17 and
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`dependent claims 16, 18−21, and 23−26, the PTAB determined that Apple and Samsung had
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`shown a reasonable likelihood that they would prevail in establishing the unpatentability of these
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`claims. Id. at 37, 39−40, 45, 48, 51. But for independent claims 1 and 27 and dependent claims
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`2−13 and 28−30, the PTAB determined that Apple and Samsung had failed to show a reasonable
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`likelihood that they will prove the unpatentability of these claims. Id. at 25−35, 49−50, 55−57. The
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`PTAB did not reach a determination for dependent claim 15. Id. at 47. The PTAB instituted IPR
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`proceedings for all of the asserted claims of the ’946 patent, including asserted claims 1−21 and
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`26−30. ECF No. 99-15 at 2. For independent claims 14, 17, and 27 and dependent claims 15,
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`18−21, 26, and 28−30, the PTAB determined that Apple and Samsung had shown a reasonable
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`likelihood that they would prevail in establishing the unpatentability of these claims. Id. at 27−28,
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`41−42. But for independent claim 1 and dependent claims 2−13 and 16, the PTAB determined that
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`Apple and Samsung had failed to show a reasonable likelihood that they would prove the
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`unpatentability of these claims. Id. at 38−39, 43, 45.
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`The Court finds that the strength of the IPR petition in this case is closer to Sonrai Memory
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`Ltd. v. LG Elecs. Inc., No. 6:21-CV-00168-ADA, 2022 WL 2307475, at *5 (W.D. Tex. June 27,
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`2022) than to Tarco, 2021 WL 4555804, at *3. In the latter, the Court granted a stay based in part
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`on the institution decisions “explicitly f[inding] a reasonable likelihood that the two asserted
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`claims were both invalid on four distinct grounds each,” and the existence of two other pre-
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`institution IPR petitions pending against the asserted claims. Tarco, 2021 WL 4555804, at *3. In
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`the former, the Court denied a stay in part because the institution decision provided little analysis
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`and explicitly stated that the petition established a reasonable likelihood it would prevail in
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`rendering one independent claim obvious on one ground while omitting similar statements from
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 12 of 13
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`its evaluation of other grounds and other independent claims. LG, 2022 WL 2307475, at *5. Here,
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`the PTAB denied institution on one of the asserted patents. See ECF No. 99-4. Thus, regardless of
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`the outcome of the IPRs, the Apple Action will not be resolved. Further, the PTAB declined to
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`determine whether Apple and Samsung had shown a reasonable likelihood that they would prevail
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`on a portion of the asserted patents. See ECF Nos. 99-10, 99-11, 99-13. And the PTAB explicitly
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`stated that Apple and Samsung had not met their burden with respect to certain independent and
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`dependent claims of the ’653 and ’946 patents. See ECF No. 99-14 and 99-15. Even more so than
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`the IPR in Sonrai, the IPR proceedings in this case leave open the possibility that the issues will
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`not be greatly simplified.
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`Because of the weakness of some of the IPR petitions and the PTAB’s denial of institution
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`for IPR proceedings on the ’075 patent, the Court finds that this factor weighs only slightly in
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`favor of granting a stay.
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`IV. CONCLUSION
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`The Court finds that the simplification-of-issues factor weighs slightly in favor of a stay
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`and the other two factors weigh slightly against a stay. The PTAB will issue its FWDs before these
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`cases make it to trial, which diminishes the prejudice that Smart Mobile faces. But the PTAB’s
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`institution decisions indicate that some of the challenged claims will not be found unpatentable.
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`And the PTAB denied institution as to one of the asserted patents in the Apple Action. Thus,
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`regardless of the outcome of the IPRs, the FWDs will not resolve the Apple Action and they are
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`unlikely to resolve the entirety of the Samsung Action.
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`For the foregoing reasons, the Court will exercise its discretion to DENY Apple and
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`Samsung’s Opposed Motion to Stay Pending Resolution of Inter Partes Review of the Asserted
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`Patents.
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`12
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`Case 6:21-cv-00603-ADA Document 128 Filed 08/08/23 Page 13 of 13
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`SIGNED this 8th day of August, 2023.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`13
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