Case 6:21-cv-01101-ADA Document 73 Filed 01/19/23 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`AIRE TECHNOLOGY LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`Case No. 6:21-cv-01101-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S MOTION TO MODIFY
`NOVEMBER 8, 2022 STAY ORDER
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`INTRODUCTION
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`This Motion is filed primarily to inform the Court that inter partes reviews (“IPRs”) have
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`been instituted on all presently asserted claims of all three Asserted Patents1, and secondarily to
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`request leave to file the attached (at Exhibit 1) motion to stay the litigation in view of those
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`instituted IPRs, so that the Court may manage its docket in view of all pertinent information.
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`ARGUMENT
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`On November 8, 2022, this Court issued a Stay Order (“Transfer Stay”) in this case. ECF
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`No. 71. In pertinent part, that Order provides:
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`The proceedings, including all deadlines, in the above captioned matter are
`STAYED as of the date of this Order, pending resolution of the Motion to
`Transfer at ECF No. 24.
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`On January 4, 2023, an event occurred of which this Court should be aware for purposes
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`1 The Asserted Patents are United States Patent Nos. 8,581,706 (“the ’706 Patent”), 8,205,249
`(“the ’249 Patent”), and 8,174,360 (“the ’360 Patent”).
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`Case 6:21-cv-01101-ADA Document 73 Filed 01/19/23 Page 2 of 5
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`of managing its own workload and in determining the future schedule of this cause. On that
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`date, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs on all currently asserted
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`claims of the Asserted Patents. See Ex. 1 at 3 & Exs. A, B, C thereto. These IPR institutions
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`create an urgent need for a determination of whether the current stay should continue or if it
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`should be replaced by a stay pending the instituted IPRs (“IPR Stay”)
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`The proposed IPR Stay Motion is attached hereto as Exhibit 1 and incorporated herein by
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`reference for all purposes. As the proposed IPR Stay Motion describes in detail, this cause is at
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`an early stage. Neither a Markman hearing nor a trial date is set. A transfer decision, a claim
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`construction hearing, most fact discovery, all expert discovery, motion practice, pretrial and trial,
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`all are ahead of the parties. Institution on all asserted claims of all Asserted Patents, coupled
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`with the broad Section 315(e) estoppel to which Apple will be subjected upon issuance of a Final
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`Written Decision, means substantial simplification is virtually guaranteed. Undue prejudice to
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`Plaintiff, as defined by the relevant caselaw, is minimal or nonexistent. Indeed, as explained in
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`Apple’s IPR Stay Motion, another of Plaintiff’s actions it filed in a different court against a
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`different party, asserting one of the Asserted Patents, the ’706 patent, was stayed five months ago
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`in view of the filing of Apple’s IPR petition on the ’706 patent, and Apple is not aware of any
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`prejudice that has been caused to Plaintiff by that other stay. See Ex. 1 at 9. Under this Court’s
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`recent decisions granting motions for stays in view of IPRs, this case is an ideal candidate for an
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`IPR Stay.
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`Granting a modification of the Transfer Stay for purposes of allowing Apple to file and
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`pursue the proposed IPR Stay Motion would benefit the Court and the parties. It would allow the
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`Court to manage its own docket based on full information. And the parties would benefit by
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`having the Court’s decision on whether to stay this case subject to the instituted IPRs.
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`Case 6:21-cv-01101-ADA Document 73 Filed 01/19/23 Page 3 of 5
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`SPECIFIC RELIEF REQUESTED
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`1.
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`That Aire be ordered to respond to this case management Motion to modify
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`within seven days, as provided by the local rules;
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`2.
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`That Apple be ordered to file its reply in seven days from the filing of Aire’s
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`response, as provided by the local rules;
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`That the Court set a hearing on this Motion as soon as the Court’s docket allows;
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`That the Court grant the present Motion and order the Clerk to file the IPR Stay
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`3.
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`4.
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`Motion; and
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`5.
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`Then, and only then, does Aire’s time to respond to the IPR Stay Motion on its
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`merits begin to run.
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`Dated: January 19, 2023
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`James R. Batchelder (pro hac vice)
`Andrew N. Thomases (admitted in W.D. Tex.)
`Andrew T. Radsch (pro hac vice)
`Daniel W. Richards (pro hac vice)
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`Tel: (650) 617-4000
`Fax: (650) 617-4090
`Email: James.batchelder@ropesgray.com
`Email: Andrew.thomases@ropesgray.com
`Email: Andrew.radsch@ropesgray.com
`Email: Daniel.richards@ropesgray.com
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`Cassandra B. Roth (pro hac vice)
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`Tel: (212) 596-9000
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`By:
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`Respectfully submitted,
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`/s/ J. Stephen Ravel
`J. Stephen Ravel
`Texas State Bar No. 16584975
`KELLY HART & HALLMAN LLP
`303 Colorado, Suite 2000
`Austin, Texas 78701
`Tel: (512) 495-6429
`Email: steve.ravel@kellyhart.com
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`Attorneys for Defendant APPLE INC.
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`-3-
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`Fax: (212) 596-9090
`Email: Cassandra.roth@ropesgray.com
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`Case 6:21-cv-01101-ADA Document 73 Filed 01/19/23 Page 5 of 5
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`CERTIFICATE OF CONFERENCE
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`Plaintiff opposes both this Motion to Modify and the Motion to Stay Pending Inter Partes
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`Review. Accordingly, this motion is presented to the Court for determination.
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`/s/ J. Stephen Ravel
`J. Stephen Ravel
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record are being served with a copy of the foregoing
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`document via the Court’s CM/ECF system on January 19, 2023.
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`/s/ J. Stephen Ravel
`J. Stephen Ravel
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