Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 1 of 15
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 1 of 15
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 2 of 15
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`AIRE TECHNOLOGY LTD.,
`
`
`
`
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`
`
`
`
`Case No. 6:21-cv-01101
`
`Jury Trial Demanded
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`
`APPLE’S MOTION TO STAY PENDING INTER PARTES REVIEW
`
`
`
`
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 3 of 15
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION ..................................................................................................................... 1
`FACTUAL AND PROCEDURAL HISTORY ......................................................................... 2
`A. Plaintiff Sued Apple on October 22, 2021 ........................................................................... 2
`B. Apple’s Promptly-Filed IPR Petitions Challenge All Asserted Claims ............................... 2
`C. Few Significant Case Events Have Occurred and None Are Set to Occur Soon ................ 2
`D. The PTAB Instituted IPR of all Presently Asserted Claims ................................................ 3
`III. ARGUMENT ............................................................................................................................. 4
`A. Legal Standard ..................................................................................................................... 4
`B. All Factors Support Granting a Stay .................................................................................... 5
`1. The Early Stage of this Case Favors Granting a Stay .................................................... 5
`2. The PTAB’s Decision Will Either Resolve This Case or Significantly Narrow the
`Issues Before the Court .................................................................................................. 7
`3. A Stay Will Not Prejudice Plaintiff ............................................................................... 9
`IV. CONCLUSION ........................................................................................................................ 10
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 4 of 15
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Aire Tech., Ltd. v. Garmin Int’l, Inc.,
`No. 8:22-cv-01027-JVS, ECF No. 39 (C.D. Cal. Aug. 16, 2022) .................................................9
`
`CANVS Corp. v. United States,
`118 Fed. Cl. 587 (2014) .................................................................................................................5
`
`Cont’l Coatings Corp. v. Metco, Inc.,
`464 F.2d 1375 (7th Cir. 1972) .......................................................................................................9
`
`Core Optical Techs., LLC v. Fujitsu Network Commc’ns, Inc.,
`No. 16-00437, 2016 WL 7507760 (C.D. Cal. Sept. 12, 2016) ......................................................8
`
`Cywee Grp. Ltd. v. Samsung Elecs. Co.,
`2019 U.S. Dist. LEXIS 144149 (E.D. Tex. Feb 14, 2019) ............................................................6
`
`E-Watch, Inc. v. Lorex Canada, Inc.,
`No. H-12-3314, 2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) ....................................................6
`
`EchoStar Techs. Corp. v. TiVo, Inc.,
`No. 5:05-cv-81, 2006 WL 2501494 (E.D. Tex. July 14, 2006) .....................................................5
`
`Evolutionary Intel., LLC v. Apple, Inc.,
`No. C13-04201 WHA, 2014 WL 93954 (N.D. Cal. Jan. 9, 2014).................................................8
`
`Kirsch Research & Dev., LLC v. IKO Indus.,
`No. 6:20-cv-00317-ADA, 2021 WL 4555610 (W.D. Tex. Oct. 5, 2021) ......................................8
`
`Kirsch Research & Dev., LLC v. Tarco Specialty Prods., Inc.,
`No. 6:20-cv-00318-ADA, 2021 WL 4555804 (W.D. Tex. Oct. 4, 2021) ..........................5, 6, 8, 9
`
`Multimedia Content Mgmt. LLC v. Dish Network L.L.C.,
`No. 6:18-cv-00207-ADA, 2019 WL 11706231 (W.D. Tex. May 30, 2019) .................................4
`
`Murata Mach. USA v. Daifuku Co.,
`830 F.3d 1357 (Fed. Cir. 2016)......................................................................................................4
`
`NFC Tech. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ........................................4, 5, 7
`
`Sonrai Memory Ltd. v. W. Digital Techs., Inc.,
`No. 6:21-cv-01168-ADA, 2022 WL 3108818 (W.D. Tex. Aug. 4, 2022) ........................5, 6, 7, 8
`
`
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 5 of 15
`
`Stragent LLC v. BMW of N. Am. LLC,
`No. 6:16-cv-446, 2017 WL 3709083 (E.D. Tex. July 11, 2017) ...................................................5
`
`Universal Elecs., Inc. v. Universal Remote Control, Inc.,
`943 F. Supp. 2d 1028 (C.D. Cal. 2013) .........................................................................................6
`
`VirtualAgility, Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................5, 9
`
`Xylon Licensing LLC v. Lone Star Nat'l Bancshares-Texas, Inc.,
`No. 6:21-cv-00302-ADA, 2022 WL 2078030 (W.D. Tex. June 8, 2022) .........................4, 6, 7, 9
`
`Statutes
`
`35 U.S.C. § 315(e) ...........................................................................................................................7, 8
`
`
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 6 of 15
`
`I.
`
`INTRODUCTION
`
`Defendant Apple Inc. (“Apple”) seeks a temporary stay of this litigation pending the
`
`outcome of instituted inter partes review (“IPR”) proceedings before the Patent Trial and Appeal
`
`Board (“PTAB”) that will materially impact—and potentially resolve—this case. Plaintiff Aire
`
`Technology Ltd. (“Plaintiff” or “Aire”) alleges infringement of three patents—United States Patent
`
`Nos. 8,581,706 (“the ’706 Patent”), 8,205,249 (“the ’249 Patent”), and 8,174,360 (“the ’360
`
`Patent”) (collectively, the “Asserted Patents”). The PTAB recently instituted IPRs on all currently
`
`asserted claims of all three Asserted Patents. See Exs. A, B, C1 (decisions granting institution of
`
`IPR on all asserted claims). Accordingly, Apple respectfully requests that the Court stay this
`
`litigation pending resolution of the instituted IPR proceedings. Plaintiff opposes a stay.
`
`Each factor the Court considers in deciding whether to stay litigation pending IPR
`
`proceedings overwhelmingly favors granting a stay here. First, discovery is far from complete:
`
`document productions and written discovery have only just begun; third-party discovery is in its
`
`infancy; with the exception of depositions of claim construction expert declarants, no depositions
`
`have been taken and none are scheduled; and expert discovery has not begun. In addition, while
`
`Markman briefing is complete, no Markman hearing has been held or is presently scheduled. And
`
`no dispositive motions have been filed. In sum, the procedural posture weighs decisively in favor
`
`of a stay. Second, with all asserted claims subject to instituted IPRs, it is indisputable that a stay
`
`would simplify the issues in question and any trial in this case, just as this Court has repeatedly
`
`found in similar circumstances. Third, a stay would not unduly prejudice Plaintiff, as it is a non-
`
`practicing entity that is seeking only monetary damages. This Court and others have consistently
`
`found in similar circumstances that a stay would not unduly prejudice the patent owner.
`
`
`1 “Ex.” refers to an exhibit to the Declaration of Daniel Richards, submitted herewith.
`1
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 7 of 15
`
`II.
`
`FACTUAL AND PROCEDURAL HISTORY
`
`A.
`
`Plaintiff Sued Apple on October 22, 2021
`
`Plaintiff filed this suit on October 22, 2021, alleging that certain of Apple’s products
`
`infringe claims of the Asserted Patents. Plaintiff is a non-practicing entity that acquired the
`
`Asserted Patents shortly before suing Apple on them. Exs. D, E, F (patent assignment records). In
`
`its Complaint, Plaintiff asserted one exemplary claim per patent. ECF No. 1 at 5, 13, 25. Plaintiff
`
`served its preliminary infringement contentions on January 20, 2022, in which it specified its
`
`asserted claims for the first time. See Ex. G (Aire’s Preliminary Infringement Contentions).
`
`Specifically, Plaintiff asserts a total of 28 claims (the “asserted claims”) from the ’706, ’249 and
`
`’360 Patents.2 Id. at 1.
`
`B.
`
`Apple’s Promptly-Filed IPR Petitions Challenge All Asserted Claims
`
`Less than five months after Plaintiff served its preliminary infringement contentions, Apple
`
`filed IPR petitions on all asserted claims. Exs. H, I, J (Apple’s IPR petitions). Apple filed those
`
`IPRs four months before its statutory deadline for doing so.
`
`C.
`
`Few Significant Case Events Have Occurred and None Are Set to Occur Soon
`
`On April 14, 2022, Apple filed its currently pending motion to transfer venue to the
`
`Northern District of California and the parties subsequently engaged in venue discovery. ECF Nos.
`
`24, 27. Fact discovery opened on July 19, 2022, and the parties concluded claim construction
`
`briefing on July 28, 2022. ECF Nos. 23, 49. However, the Court has not yet held a claim
`
`construction hearing. While the parties have served and responded to some discovery requests and
`
`produced some documents, written discovery and document productions are far from complete.
`
`Richards Decl. 2. Except for depositions of claim construction expert declarants, no depositions
`
`
`2 Plaintiff is asserting claims 1-3, 11-12, 16, 18, and 20 of the ’706 Patent, claims 1-12 of the ’249
`Patent, and claims 1-3, 8-11, and 15 of the ’360 Patent. See Ex. G at 1.
`2
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 8 of 15
`
`have occurred, and none are scheduled. Richards Decl. 2. Nor has either party served any
`
`deposition notices on the other. Richards Decl. 2. Third-party discovery also is in its infancy, with
`
`only one third party (NXP) having produced some discovery. Richards Decl. 2. Furthermore, the
`
`parties have not exchanged final invalidity or infringement contentions. Indeed, fact discovery,
`
`along with the rest of the case, currently is and has been stayed per the Court’s November 8, 2022
`
`Order vacating the Discovery and Scheduling Order. ECF No. 71.
`
`Finally, on September 30, 2022, Plaintiff filed a motion to amend its preliminary
`
`infringement contentions to add claim 13 of the ’249 patent. ECF No. 63. The Court has not yet
`
`taken up that Motion.
`
`D.
`
`The PTAB Instituted IPR of all Presently Asserted Claims
`
`Apple timely and diligently filed petitions for IPR challenging all asserted claims. On
`
`January 4, 2023, the PTAB instituted three IPR proceedings (one for each of the Asserted Patents)
`
`addressing all 28 asserted claims—finding that there is a “reasonable likelihood” that Apple will
`
`prevail with respect to at least one of the challenged claims of each patent. Exs. A at 30, B at 25, C
`
`at 39. Accordingly, all asserted claims are now subject to instituted IPR proceedings, two of which
`
`include multiple grounds of unpatentability, with final written decisions due by January 4, 2023, as
`
`summarized in the following chart.3
`
`
`
`
`
`
`3 As noted above, on September 30, 2022, Aire filed a motion to add to its preliminary infringement
`contentions independent claim 13 of the ’249 Patent. ECF No. 63. Aire’s operative contentions
`assert only claims 1-12. Ex. G at 1. On October 21, 2022, less than one month after Aire filed that
`motion, Apple filed a petition for IPR of claim 13 of the ’249 Patent. Ex. K (IPR Petition in
`IPR2023-0080). Given the similarities between claim 13 and the other independent claims (1, 10)
`of the ’249 patent, Apple’s separate petition for claim 13 asserts the same ground of unpatentability
`on which the PTAB already instituted for the other independent claim. Exs. I, K. Accordingly,
`Apple believes that it is likely that its petition directed to claim 13 also will be instituted.
`3
`
`
`
`

`

`
`
`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 9 of 15
`
`IPR No. (Patent)
`
`Petition Filed
`
`Institution Decision
`
`IPR2022-01135
`(’249 Patent)
`IPR2022-01136
`(’360 Patent)
`IPR2022-01137
`(’706 Patent)
`
`6/15/2022
`
`6/15/2022
`
`6/15/2022
`
`1/4/2023
`
`1/4/2023
`
`1/4/2023
`
`Final Written
`Decision Deadline
`1/4/2024
`
`1/4/2024
`
`1/4/2024
`
`In the IPRs, Apple has stipulated that it will not pursue the prior art obviousness
`
`combinations asserted in the Petitions in the present district court action—even absent the statutory
`
`estoppel flowing from a final written decision. Exs. A at 6-7, B at 6, C at 7 (institution decisions
`
`noting Apple’s Sand stipulation).
`
`III. ARGUMENT
`
`A.
`
`Legal Standard
`
`This Court “has the inherent power to control its own docket, including the power to stay
`
`proceedings before it.” Xylon Licensing LLC v. Lone Star Nat'l Bancshares-Texas, Inc., No. 6:21-
`
`cv-00302-ADA, 2022 WL 2078030, at *1 (W.D. Tex. June 8, 2022) (granting stay pending IPR);
`
`see also Murata Mach. USA v. Daifuku Co., 830 F.3d 1357, 1361 (Fed. Cir. 2016); Multimedia
`
`Content Mgmt. LLC v. Dish Network L.L.C., No. 6:18-cv-00207-ADA, 2019 WL 11706231, at *1
`
`(W.D. Tex. May 30, 2019) (“the question whether to stay proceedings pending inter partes review
`
`of a patent is a matter committed to the district court’s discretion”). When, as here, “the outcome
`
`of a PTO proceeding is likely to assist the court in determining patent validity or eliminate the need
`
`to try infringement issues,” this Court has held that a “stay is particularly justified.” Xylon
`
`Licensing, 2022 WL 2078030, at *1 (quoting NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058,
`
`2015 WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015)).
`
`District courts generally consider three factors to determine whether a stay is appropriate:
`
`“(1) whether the stay will unduly prejudice the nonmoving party, (2) whether the proceedings
`
`
`
`4
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 10 of 15
`
`before the court have reached an advanced stage, including whether discovery is complete and a
`
`trial date has been set, and (3) whether the stay will likely result in simplifying the case before the
`
`court.” Kirsch Research & Dev., LLC v. Tarco Specialty Prods., Inc., No. 6:20-cv-00318-ADA,
`
`2021 WL 4555804, at *2 (W.D. Tex. Oct. 4, 2021) (quoting NFC Tech., 2015 WL 1069111, at *2).
`
`“Essentially, courts determine whether the benefits of a stay outweigh the inherent costs based on
`
`these factors.” Id. at *2 (quoting EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-cv-81, 2006 WL
`
`2501494, at *1 (E.D. Tex. July 14, 2006)). Patent Office proceedings that are directed to all
`
`asserted claims and therefore can “dispose of the entire litigation” present “the ultimate
`
`simplification of issues.” VirtualAgility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1314 (Fed.
`
`Cir. 2014).
`
`B.
`
`All Factors Support Granting a Stay
`
`1.
`
`The Early Stage of this Case Favors Granting a Stay
`
`The first factor favors a stay because the case’s substantive progress is minimal. See
`
`Stragent LLC v. BMW of N. Am. LLC, No. 6:16-cv-446, 2017 WL 3709083, at *3 (E.D. Tex. July
`
`11, 2017) (explaining that a stay is more likely to be granted when sought early in a case because
`
`“the majority of the expenses that the parties will incur are still in the future”). As detailed above,
`
`fact discovery has been stayed since November 2022 and the parties have not taken or noticed any
`
`fact depositions, third party discovery is largely outstanding, document productions and written
`
`discovery have started but are not complete, the parties have not exchanged final invalidity or
`
`infringement contentions, and there is not currently a trial date set. In other words, there has been
`
`no “protracted and expansive discovery” to date. Sonrai Memory Ltd. v. W. Digital Techs., Inc.,
`
`No. 6:21-cv-01168-ADA, 2022 WL 3108818, at *3 (W.D. Tex. Aug. 4, 2022) (explaining that this
`
`factor weighs against a stay if “protracted and expansive discovery has already occurred, or the
`
`
`
`5
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 11 of 15
`
`court has expended significant resources”) (quoting CANVS Corp. v. United States, 118 Fed. Cl.
`
`587, 595 (2014)).
`
`The early stage of this case also means that the parties have not yet asked the Court to
`
`expend substantial resources in analyzing the issues or deciding disputes—an important factor that
`
`justifies a stay. See Tarco Specialty Prods., 2021 WL 4555804, at *2 (“If the court has expended
`
`significant resources, then courts have found that this factor weighs against a stay.” (citation
`
`omitted)); Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1031-32
`
`(C.D. Cal. 2013). Here, there has been no Markman hearing held nor is one currently scheduled;
`
`no other hearings have been held; and no dispositive motions have been filed. Aside from one
`
`email submission regarding the adequacy of Aire’s infringement contentions, the parties have not
`
`asked the Court to address any discovery-related disputes. The only substantive filings before the
`
`Court concern Apple’s Motion to Transfer and Aire’s motion to amend its preliminary infringement
`
`contentions to add a claim. ECF Nos. 24, 36, 40, 41, 43, 50, 63, 66, 67. Courts in similar
`
`situations, and even in more advanced postures, have found stays to be appropriate. E.g., E-Watch,
`
`Inc. v. Lorex Canada, Inc., No. H-12-3314, 2013 WL 5425298, at *3 (S.D. Tex. Sept. 26, 2013)
`
`(finding stay was appropriate when case was on file for 10 months, discovery was in early stages,
`
`and parties had exchanged infringement and invalidity contentions); Cywee Grp. Ltd. v. Samsung
`
`Elecs. Co., 2019 U.S. Dist. LEXIS 144149, at *19-22 (E.D. Tex. Feb. 14, 2019) (granting stay
`
`where the case was pending for two years and claim construction and discovery were nearly
`
`complete, because the most burdensome parts of the case remained). Because the parties and the
`
`Court have not yet expended significant resources on this case, this factor favors a stay. See Xylon
`
`Licensing, 2022 WL 2078030, at *2.
`
`
`
`6
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 12 of 15
`
`2.
`
`The PTAB’s Decision Will Either Resolve This Case or Significantly
`Narrow the Issues Before the Court
`
`The second factor favors a stay because the PTAB’s final decisions are likely to resolve, or
`
`at minimum significantly narrow, the parties’ disputes. In both Xylon Licensing and Sonrai
`
`Memory, this Court emphasized that the potential of inter partes review to simplify the issues is the
`
`“most important factor bearing on whether to grant a stay.” Xylon Licensing, 2022 WL 2078030, at
`
`*3 (quoting NFC Tech., 2015 WL 1069111, at *4); Sonrai Memory, 2022 WL 3108818, at *3
`
`(“This is the most important factor in the stay analysis.” (internal quotation marks and citation
`
`omitted)).
`
`Under this factor, the Court will typically weigh: the scope of estoppel the movant
`is bound by; and the strength of the relevant IPR petition in the context of the
`asserted claims. As a general matter, the PTAB’s suggestion that an IPR petition
`contains strong grounds for invalidating all the asserted claims, combined with the
`movant’s acceptance of a broad estoppel, suggests that a stay would simplify
`issues.
`
`Sonrai Memory, 2022 WL 3108818, at *3.
`
`As noted above, the PTAB has instituted trial on all currently asserted claims. Apple will
`
`be bound by a broad estoppel under 35 U.S.C. § 315(e) once final written decisions issue, and
`
`stipulated that it will not pursue the instituted prior art combinations in the parallel district court
`
`proceeding even absent final written decisions. See Exs. A at 6-7, B at 6, C at 7 (institution
`
`decisions noting stipulation). Thus, resolution of the pending IPR proceedings will inevitably
`
`simplify the issues before this Court. The PTAB’s institution of Apple’s petitions, including
`
`multiple grounds of unpatentability for two of the three patents, found a reasonable likelihood that
`
`at least one claim per patent is unpatentable. Exs. A at 30, B at 25, C at 39. As this Court has
`
`concluded before, there is thus a “good chance” that, in less than a year, “the PTAB will find the
`
`asserted claims unpatentable” in its final written decisions. Sonrai Memory, 2022 WL 3108818, at
`
`*5. If it does so, Plaintiff’s claims will be disposed of entirely, and even a partial cancellation of
`7
`
`
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 13 of 15
`
`the asserted claims will narrow the claims left to litigate in this case. Either way, this Court has
`
`held that such circumstances favor a stay. Id. Further, even if no claim is ultimately held
`
`unpatentable by the PTAB, the intrinsic record developed during the proceedings, including
`
`Plaintiff’s arguments related to claim construction and scope, are highly probative to claim
`
`construction issues that will be considered by this Court. See, e.g., Core Optical Techs., LLC v.
`
`Fujitsu Network Commc’ns, Inc., No. 16-00437, 2016 WL 7507760, at *2 (C.D. Cal. Sept. 12,
`
`2016) (granting motion to stay pending IPR and explaining that “[e]ven if no patent claim is
`
`eliminated, the intrinsic record developed during the IPR may inform on issues like claim
`
`construction”). As many courts have noted, “there is . . . little benefit to be gained from having two
`
`forums review the validity of the same claims at the same time.” Evolutionary Intel., LLC v. Apple,
`
`Inc., No. C13-04201 WHA, 2014 WL 93954, at *3 (N.D. Cal. Jan. 9, 2014).
`
`Moreover, in the unlikely event that all asserted claims survive the IPRs, the issues for trial
`
`will still be substantially narrowed because Apple, as a petitioner, will be subject to the full scope
`
`of estoppel under 35 U.S.C. § 315(e). This is a “fairly broad estoppel” that this Court has
`
`repeatedly ruled justifies a stay. Sonrai Memory, 2022 WL 3108818, at *3; see Kirsch Research &
`
`Dev., LLC v. IKO Indus., No. 6:20-cv-00317-ADA, 2021 WL 4555610 (W.D. Tex. Oct. 5, 2021)
`
`(same). Due to the impact of estoppel, the IPR proceedings will necessarily and substantially
`
`simplify the issues before this Court.
`
`Granting a stay will therefore prevent wasteful, continued litigation of claims and issues that
`
`will be resolved by the PTAB’s decisions. See Kirsch, 2021 WL 4555610, at *3 (granting stay
`
`pending resolution of related ITC proceeding and/or IPR of the patent-in-suit where “the
`
`simplification-of-issues factor overwhelms the other two factors”); accord Tarco Specialty Prods.,
`
`2021 WL 4555804, at *2. The second and most important factor therefore also favors a stay of this
`
`litigation.
`
`
`
`8
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 14 of 15
`
`3.
`
`A Stay Will Not Prejudice Plaintiff
`Granting a stay will not prejudice Plaintiff. Plaintiff is a non-practicing entity without any
`
`products or market share and does not compete with Apple. Moreover, in its Complaint and
`
`Amended Complaint, Aire does not seek injunctive relief. ECF Nos. 1, 72. Thus, any recovery by
`
`Plaintiff is limited to monetary damages and the only theoretical prejudice that Plaintiff may suffer
`
`is a delay of a damages award. But it is well settled that such delay alone does not establish undue
`
`prejudice. See, e.g., VirtualAgility, 759 F.3d at 1318. Indeed, as this Court repeatedly has
`
`explained, “[p]arty interest is diminished where only monetary recovery is available.” Xylon
`
`Licensing, 2022 WL 2078030, at *2; Tarco Specialty Prods., 2021 WL 4555804, at *2 (“[t]he
`
`weight of Plaintiff’s interest in timely enforcement is diminished here where a stay would merely
`
`delay Plaintiff’s potential monetary recovery”). Here, to the extent any of Plaintiff’s claims remain
`
`after the IPRs are resolved, a stay will not limit Plaintiff’s ability to recover damages, provided it
`
`can prove infringement.
`
`Moreover, nearly five months ago, another of Plaintiff’s suits asserting one of the Asserted
`
`Patents here, the ’706 patent, was stayed in view of the filing of Apple’s IPR petition, and Apple is
`
`unaware of any undue prejudice to Aire arising from that stay. Specifically, on August 16, 2022,
`
`the District Court for the Central District of California issued a stay of Aire’s litigation against
`
`Garmin pending IPR of the ’706 patent. See Aire Tech., Ltd. v. Garmin Int’l, Inc., No. 8:22-cv-
`
`01027-JVS, ECF No. 39 (C.D. Cal. Aug. 16, 2022). Aire has not sought to lift that stay as a result
`
`of any undue prejudice befalling it from that stay, nor has it identified to Apple any prejudice
`
`arising from that stay. These facts confirm that there would be no undue prejudice to Plaintiff
`
`arising from a temporary stay of litigation in the instant case.
`
`
`
`9
`
`

`

`
`
`Case 6:21-cv-01101-ADA Document 73-2 Filed 01/19/23 Page 15 of 15
`
`IV. CONCLUSION
`
`This case is at an early stage, and a stay pending the PTAB’s decisions will not prejudice
`
`Plaintiff. Moreover, the PTAB’s decisions will significantly impact, if not resolve, the issues left to
`
`litigate in this Court. Because a stay pending the PTAB’s decisions will conserve party and judicial
`
`resources, the Court should grant this Motion.
`
`
`
`Dated: January 19, 2023
`
`
`
`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
`
`Cassandra B. Roth (pro hac vice)
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`Tel: (212) 596-9000
`Fax: (212) 596-9090
`Email: Cassandra.roth@ropesgray.com
`
`
`
`
`
`
`
`
`By:
`
`Respectfully submitted,
`
`/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
`
`Attorneys for Defendant APPLE INC.
`
`
`
`
`
`10
`
`