Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 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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`CIVIL ACTION NO. 6:21-cv-735-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT GOOGLE LLC’S REPLY IN SUPPORT OF ITS
`OPPOSED MOTION TO STAY
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 2 of 8
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`I.
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`INTRODUCTION
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`Ancora cannot justify denying Google’s motion to stay pending ex parte reexamination
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`(“EPR”). First, Ancora claims a stay will not simplify the issues in this case, but this case is
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`particularly ripe for issue simplification from the EPR, as every asserted claim is challenged in the
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`EPR. Because the patent is expired, the PTO will either cancel or confirm the claims in the EPR;
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`the PTO will not allow amendments. Next, Ancora claims it will be prejudiced by the delay
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`inherent in a stay, but Ancora waited seventeen years to bring this case. Any delay is of Ancora’s
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`own making. And Ancora cannot dispute that discovery is not complete and a trial date has not
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`been set. Therefore, every factor weighs in favor of a stay.
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`II.
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`ARGUMENT
`A.
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`The EPR May Eliminate This Case Altogether
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`Ancora incorrectly argues that the EPR is “extremely unlikely to invalidate or even reach
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`the merits of any of Ancora’s patent claims.” Dkt. 29 (“Opp.”) at 5. Ancora’s cited evidence
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`contradicts its position. Almost 80% of EPRs result in all claims being cancelled or with claim
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`changes. Dkt. 29-6 at 3. Given that the patent is expired, the claims can only be canceled and
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`cannot be amended. See 37 C.F.R. § 1.530. Thus, there is a higher than normal chance that the
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`EPR here will completely resolve all of the issues in this case.
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`Ancora argues that an EPR is less likely than an IPR to simplify the issues for trial because
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`EPRs do not result in estoppel. Opp. at 4–5. Ancora ignores that the issues unquestionably will be
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`simplified if the patent claims are ultimately cancelled. Ancora cites cases from other districts (see
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`id. at 4) but ignores that this Court recently found this factor favored a stay because “in 80% of ex
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`parte reexaminations, the claims are cancelled or amended. And because the [] Patent expired, it
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`cannot be amended and can only be cancelled.” TC Tech. LLC v. T-Mobile USA, Inc., No. 6:20-
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`cv-899-ADA, Dkt. 44 at 7 (W.D. Tex. Dec. 7, 2021) (citations omitted). Moreover, in the cases
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 3 of 8
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`cited by Ancora (Opp. at 4), the patents had not expired as it has here. Ancora’s position is
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`essentially that this factor can never weigh in favor of a stay pending EPR. Such position should
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`be rejected.
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`Next, Ancora speculates that the EPR will be dismissed. Opp. at 5–6. According to Ancora,
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`the PTO cannot further consider the EPR because it presents the exact same form of “undesirable,
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`incremental petitioning” that was found impermissible in In re Vivint, Inc.. 14 F.4th 1342, 1346
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`(Fed. Cir. 2021). This argument fails for numerous reasons. First, as Ancora concedes, it has not
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`even raised this argument with the PTO. Opp. at 3. Further, the Vivint decision is premised on the
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`same petitioner filing serial, similar petitions. Although Ancora claims HTC requested the EPR at
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`issue, the request was anonymous and simply identifies a law firm partner as the official requester.
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`See Ex. 5 at 1. Ancora’s argument that the EPR will be dismissed based on HTC’s involvement is
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`unsupported by evidence and purely speculative.
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`Even if HTC did file the request, it does not constitute the impermissible “incremental
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`petitioning” seen in Vivint. In Vivint, the requester filed two IPR petitions that were denied on the
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`merits. See Alarm.com Inc. v. Vivint, Inc., IPR2016-01091, Paper 11 at 2, 8–9 (P.T.A.B. Nov. 23,
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`2016). Then, the requester filed a third IPR petition that the PTO characterized as “fixing
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`deficiencies, noted by the Board, that were within the petitioner’s capacity to avoid in the earlier
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`petition or petitions.” Id. at 12. The Federal Circuit held that it was arbitrary to grant a fourth-filed
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`EPR after the PTO already found that the third-party requester had engaged in “undesirable,
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`incremental petitioning.” In re Vivint, 14 F.4th at 1354. Vivint’s reasoning does not apply to the
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`pending EPR here. HTC’s CBM and IPR petitions were denied on procedural grounds, without
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`any discussion of the merits of the prior art challenges. See Ex. 6 at 11 (concluding that the ’941
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`Patent is not a covered business method patent), Ex. 7 at 8–14 (denying institution based on
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 4 of 8
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`General Plastics factors). Those previous decisions could not have served as a roadmap for the
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`reexamination request because those decisions did not address the merits. Moreover, HTC’s prior
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`petitions were not characterized as an example of incremental petitioning. Thus, there is no reason
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`to believe the PTO must dismiss the EPR under Vivint as Ancora argues. Notably, the Federal
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`Circuit’s decision repeatedly stated that the ruling was limited and made clear that it was “not
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`holding that the Director may never launch a reexamination even when a particular challenger has
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`engaged in improper serial filing.” In re Vivint, 14 F.4th at 1354.
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`Last, Ancora relies on a string of speculations to support that the stay should be denied.
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`First, it claims that the IPR petitions filed by Nintendo and Roku may be dismissed. Opp. at 6.
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`Then, it states that the PTO may take into account these rejections and may use them as a basis to
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`dismiss the EPR that it has already instituted. Id. These speculations cannot justify continuing to
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`litigate this case when it is irrefutable that the PTO confirms all claims of only 21% of EPRs. Dkt.
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`29-6 at 3.
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`This most important factor therefore weighs in favor of a stay. A third party requested an
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`EPR challenging all asserted claims, the PTO granted the request, and Google promptly moved to
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`stay this case. Because the EPR challenges all claims asserted in this case, a stay pending the EPR
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`is likely to result not only in a simplification of the issues, but a resolution of the issues in their
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`entirety. See AGIS Software Dev. LLC v. Google LLC, No. 2:19-CV-00359-JRG, 2021 WL
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`465424, at *2 (E.D. Tex. Feb. 9, 2021) (staying litigation and explaining: “where the . . . PTO has
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`granted EPR[]s as to all claims of all asserted patents, this Court has likewise routinely stayed
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`cases . . . .”).
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 5 of 8
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`B.
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`Ancora Will Suffer No Prejudice or Clear Tactical Disadvantage Due to a Stay,
`as Shown by Ancora’s Seventeen Year Delay in Bringing This Case
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`Ancora does not dispute that it is a non-practicing patent assertion entity but insists that it
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`has an interest in timely enforcing its patents rights. But this interest “is present in every case where
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`a patent owner resists a stay, [and] that alone is insufficient to defeat a motion to stay.” TC Tech.,
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`No. 6:20-cv-899-ADA, Dkt. 44 at 4 (citation omitted).
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`Ancora argues it will suffer prejudice due to a risk of a loss of evidence during the stay.
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`Opp. at 7–8. Ancora argues that there is a particular risk here where evidence relating to the
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`accused OTA updates allegedly “rests with third parties.” Id. at 7. It is not clear what Ancora is
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`referring to, but its seventeen-year delay in filing this case undermines its argument. TC Tech., No.
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`6:20-cv-899-ADA, Dkt. 44 at 4. “[E]ven if there is a risk of a loss of evidence or witnesses’
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`memories were to fade, that loss is likely marginal” in light of this delay. Id. This factor therefore
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`weighs in favor of a stay.
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`C.
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`Discovery Is Not Complete and a Trial Date Has Not Been Set
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`Ancora does not dispute that discovery is not complete and a trial date has not been set.
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`The cases Ancora cites in its opposition are factually distinct from the case at hand. In each, the
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`court considered that the defendant had delayed in filing the petition for the reexamination. See
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`Trover Grp., Inc. v. Dedicated Micros USA, No. 2:13-CV-1047, 2015 WL 1069179, at *3–4 (E.D.
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`Tex. Mar. 11, 2015); Tessera Advanced Techs., Inc. v. Samsung Elecs. Co., No. 2:17-CV-00671-
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`JRG, 2018 WL 3472700, at *3 (E.D. Tex. July 19, 2018). That is not the case here, where Google
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`did not even file the EPR. Google did not delay in filing this motion either; it was filed within four
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`weeks of the EPR being instituted (including an intervening holiday). Thus, this factor clearly
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`weighs in favor of a stay.
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 6 of 8
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`III. CONCLUSION
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`This case is substantially similar to TC Technology, where this Court stayed the case
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`pending resolution of an EPR. Here, the factors weigh in favor of a stay because Ancora delayed
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`years in filing the case, is a non-practicing entity, all asserted claims are challenged in the EPR,
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`and the patent is expired. Therefore, Google respectfully requests that its motion be granted.
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 7 of 8
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`DATED: January 6, 2022
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`Respectfully Submitted,
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`/s/ Robert W. Unikel
`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
`
`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
`
`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`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
`
`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
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`Case 6:21-cv-00735-ADA Document 30 Filed 01/06/22 Page 8 of 8
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`401 Congress Ave., Suite 1650
`Austin, TX 78701
`Telephone: (512) 402-3550
`Facsimile: (512) 402-6865
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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 6th day of January, 2022, 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/ Robert W. Unikel
`Robert W. Unikel
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`-7-
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