Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`ANCORA TECHNOLOGIES, INC.
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`vs.
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`GOOGLE LLC,
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`Plaintiff,
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`Defendant.
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`NO. 6:21-cv-00735-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO STAY
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 2 of 8
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`I.
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`INTRODUCTION
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`Defendant Google LLC respectfully moves to stay all deadlines in this case pending
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`resolution of the ex parte reexamination (“EPR”) of all asserted claims, granted on November 17,
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`2021.1 A stay is appropriate given that all the asserted claims stand to be invalidated by the patent
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`office in the pending EPR. It thus does not make sense to proceed on the merits of this case when
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`all claims may be rendered moot. Indeed, all of the factors courts consider in staying a case pending
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`EPR favor a stay. A stay is therefore appropriate.
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`II.
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`FACTUAL BACKGROUND
`A.
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`A Request for EPR of All Asserted Claims Has Been Granted
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`On November 17, 2021, the PTO granted a request for ex parte reexamination of the sole
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`asserted patent in this case, finding that a substantial new question of patentability affecting the
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`patent claims was raised. Ex. 1. The EPR covers all asserted claims in this case. Declaration of
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`Robert W. Unikel (“Unikel Decl.”) ¶ 2.
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`B.
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`This Case Is in Its Early Stages
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`Ancora Technologies, Inc. filed its complaint against Google on July 16, 2021 asserting
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`U.S. Patent No. 6,411,941. See Dkt. 1. On October 28, 2021, the parties filed a joint proposed
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`schedule. Dkt. 22. The Court has not yet addressed the proposed schedule or otherwise entered a
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`schedule in this case. Google filed a motion to transfer to the Northern District of California on
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`November 23, 2021. Dkt. 23. Ancora then filed a notice of intent to proceed with venue discovery.
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`1 There are also two pending inter partes review (“IPR”) petitions against the asserted claims. In
`August 2021 Roku and Nintento filed these IPR petitions based on the same references that were
`the grounds for a previously instituted IPR. Compare IPR2020-01609, Paper 7 (listing references
`Hellman, Chou, and Schneck as asserted grounds of unpatentability), with IPR2021-01406 and
`IPR2021-01338 (listing the same). An institution decision on these newly filed IPRs is expected
`in February 2022. The previously instituted IPR has since been voluntarily dismissed by the parties
`before the final written decision pursuant to settlement. IPR2020-01609, Paper 21.
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`1
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 3 of 8
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`Dkt. 26. In addition to the venue discovery, in the next few months, there is much substantive work
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`to be done including preparing the claim construction statement and briefing leading up to the
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`Markman hearing. Extensive fact and expert discovery will commence after that hearing.
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`III. LEGAL STANDARD
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`The “power to stay proceedings” is part of a district court’s “inherent power ‘to control the
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`disposition of the causes on its docket with economy of time and effort for itself, for counsel, and
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`for litigants.’” United States v. Colomb, 419 F.3d 292, 299 (5th Cir. 2005) (citation omitted);
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`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (“Courts have inherent power to
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`manage their dockets and stay proceedings, including the authority to order a stay pending
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`conclusion of a PTO reexamination.” (internal citation omitted)).
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`In deciding whether to stay litigation pending reexamination, courts consider: “(1) whether
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`the stay will unduly prejudice the nonmoving party, (2) whether the proceedings before the court
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`have reached an advanced stage, including whether discovery is complete and a trial date has been
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`set, and (3) whether the stay will likely result in simplifying the case before the court.” Kirsch
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`Research & Dev., LLC v. IKO Indus., Inc., No. 6:20-cv-00317-ADA, 2021 WL 4555610, at *2
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`(W.D. Tex. Oct. 4, 2021) (citation omitted). “A stay is particularly justified when ‘the outcome of
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`a PTO proceeding is likely to assist the court in determining patent validity or eliminate the need
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`to try infringement issues.’” Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-cv-
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`00011-RSP, 2016 WL 1162162, at *1 (E.D. Tex. Mar. 23, 2016) (citation omitted).
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`IV. A STAY PENDING RESOLUTION OF THE EPR IS WARRANTED
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`Every factor that courts consider in determining whether to grant a stay pending EPR also
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`favors a stay here.
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`2
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 4 of 8
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`A.
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`A Stay Will Not Unduly Prejudice or Present a Clear Tactical Disadvantage
`to Ancora, a Non-Practicing Entity
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`There is no prejudice to Ancora in staying this case, let alone any undue prejudice, and
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`Ancora will not experience any tactical disadvantage. Ancora is a non-practicing entity and does
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`not market or sell any products that practice the patented technologies. Ancora Techs., Inc. v. LG
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`Elecs. U.S.A., Inc. et al., No. 1:20-CV-00034-ADA, 2021 WL 3022929 (W.D. Tex. Mar. 12, 2021)
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`(a motion in limine filed by Ancora stating that “at present, it does not practice the ’941 Patent.”).
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`Thus, Ancora does not compete with Google with respect to any products or patented technologies.
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`And Ancora seeks only monetary damages in this case, not injunctive relief (see Dkt. 1 at 31).
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`“[M]ere delay in collecting those damages does not constitute undue prejudice.” Crossroads Sys.,
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`Inc. v. Dot Hill Sys. Corp., No. 13-ca-1025, 2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015).
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`Indeed, the Federal Circuit has held that “[a] stay will not diminish the monetary damages to which
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`[the plaintiff] will be entitled if it succeeds in its infringement suit—it only delays realization of
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`those damages and delays any potential injunctive remedy.” VirtualAgility Inc. v. Salesforce.com,
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`Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). While this Court has recognized that a patent owner
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`has an interest in the timely enforcement of its patent rights, it has also found that this type of
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`interest “is present in every case where a patent owner resists a stay, [and] that alone is insufficient
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`to defeat a motion to stay.” TC Tech. LLC v. T-Mobile USA, Inc., No. 6:20-cv-899-ADA, Dkt. 44
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`at 4 (W.D. Tex. Dec. 7, 2021) (Ex. 2) (citing NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058,
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`2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015)) .
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`Further undermining any suggestion that a stay will prejudice Ancora is the fact that
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`Ancora waited nearly seventeen years before bringing this suit against Google. See Ex. 3 (showing
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`Ancora was purportedly assigned the ’941 Patent in 2004); VirtualAgility, 759 F.3d at 1319 (undue
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`prejudice not found where plaintiff waited nearly a year after the patent was issued before bringing
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 5 of 8
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`suit). And importantly, the ’941 patent expired over 3 years ago. Thus, there will be no possibility
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`of continuing harm, to the extent there was any in the first instance.
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`There is also a pending motion to transfer in this case (Dkt. 23). Some dates are therefore
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`already stayed pending resolution of the transfer motion per the Court’s August 18, 2021 Second
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`Amended Standing Order Regarding Inter-District Transfer. And Ancora has requested venue
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`discovery, further delaying the deadlines in this case.
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`A stay will benefit Ancora because it will avoid needless litigation in the event the claims
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`are found unpatentable. In TC Technology, the Court recently found that this factor favored a stay
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`on facts nearly identical to those here: the asserted patent was expired, plaintiff delayed at least
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`eight years to bring the lawsuit, and plaintiff was a patent assertion entity seeking only monetary
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`relief. No. 6:20-cv-899-ADA, Dkt. 44 at 3–4. The facts in this case present a stronger case for a
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`stay because Ancora waited seventeen years to file its complaint. This factor therefore favors a
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`stay.
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`B.
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`Discovery Is Not Complete and a Trial Date Has Not Been Set
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`Fact discovery has not even begun. And a trial date has not been set. In fact, there is not
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`yet a scheduling order governing this case. This factor therefore favors a stay. See TC Tech., No.
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`6:20-cv-899-ADA, Dkt. 44 at 5 (finding this factor favored a stay even where infringement
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`contentions had been served).
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`C.
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`A Stay Will Simplify the Issues in Question and Trial of the Case
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`“The most important factor bearing on whether to grant a stay in this case is the prospect
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`that the [invalidity] proceeding will result in simplification of issues before the Court.” Intellectual
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`Ventures II LLC v. BITCO Gen. Ins. Corp., No. 6:15-CV-59, 2016 WL 4394485, at *3 (E.D. Tex.
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`May 12, 2016) (citation omitted). Cancellation of all the asserted claims would completely resolve
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`this case, and cancellation of some asserted claims would reduce the number of claims remaining
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 6 of 8
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`for trial. PTO statistics show that 79% of EPRs result in either cancellation of all claims or
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`amendment of those claims (Ex. 4 at 2). Because the ’941 patent is expired, its claims cannot be
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`amended and they would simply be cancelled. See 37 C.F.R. § 1.530; TC Tech., No. 6:20-cv-899-
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`ADA, Dkt. 44 at 7 (finding this factor favored a stay and noting: “in 80% of ex parte
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`reexaminations, the claims are cancelled or amended. And because the ’488 Patent expired, it
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`cannot be amended and can only be cancelled.”). This factor therefore strongly favors a stay. See
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`AGIS Software Dev. LLC v. Google LLC, No. 2:19-CV-00359-JRG, 2021 WL 465424, at *1 (E.D.
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`Tex. Feb. 9, 2021) (staying litigation and explaining: “where the . . . PTO has granted EPR[]s as
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`to all claims of all asserted patents, this Court has likewise routinely stayed cases . . . .”).
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`V.
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`CONCLUSION
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`A stay is warranted in this case pending resolution of the EPR. The parties and the Court
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`should not expend valuable time and resources litigating a case where all asserted claims are likely
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`to be found unpatentable. Google therefore requests that the Court stay all proceedings pending
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`the EPR’s resolution.
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 7 of 8
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`DATED: December 16, 2021
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`Respectfully Submitted,
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`/s/ Brian C. Banner
`Brian C. Banner (TX Bar No. 24059416)
`bbanner@sgbfirm.com
`Truman H. Fenton (TX Bar No. 24059742)
`tfenton@sgbfirm.com
`Darryl J. Adams (TX Bar No. 00796101)
`dadams@sgbfirm.com
`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Ave., Suite 1650
`Austin, TX 78701
`Telephone: (512) 402-3550
`Facsimile: (512) 402-6865
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`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, 45th Floor
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
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`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`Ariell N. Bratton (Pro Hac Vice)
`ariellbratton@paulhastings.com
`Sachin Bhatmuley (Pro Hac Vice)
`sachinbhatmuley@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
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`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
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`Case 6:21-cv-00735-ADA Document 28 Filed 12/16/21 Page 8 of 8
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`Facsimile: (212) 319-4090
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`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
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`Attorneys for Defendant Google LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 16th day of December, 2021, I electronically filed the foregoing
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`with the Clerk of Court using the CM/ECF system which will send notification of such filing to
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`all counsel of record.
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`/s/ Brian C. Banner
`Brian C. Banner
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(g), counsel for the parties to this motion conferred in a
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`goodfaith effort on November 22, 2021 to resolve the matter presented herein. Counsel for Ancora
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`Technologies, Inc. opposes the instant motion.
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`/s/ Brian C. Banner
`Brian C. Banner
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