Case 6:21-cv-01101-ADA Document 74 Filed 01/26/23 Page 1 of 8
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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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`Case No. 6:21-cv-01101-ADA
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`JURY TRIAL DEMANDED
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`v.
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`APPLE INC.,
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`Defendant.
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`AIRE TECHNOLOGY LTD.’S OPPOSITION TO APPLE INC.’S
`MOTION TO MODIFY STAY ORDER
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`Case 6:21-cv-01101-ADA Document 74 Filed 01/26/23 Page 2 of 8
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .................................................................................................................. 1
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`II. LEGAL STANDARD ............................................................................................................ 2
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`III. ARGUMENT .......................................................................................................................... 2
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`A. The Court should resolve Apple’s transfer motion prior to considering a
`motion to stay pending resolution of Apple’s IPRs ........................................................ 2
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`B. The Court should provide Aire with the opportunity to provide a full
`response to Apple’s stay motion ..................................................................................... 2
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`IV. CONCLUSION ...................................................................................................................... 4
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`i
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`Case 6:21-cv-01101-ADA Document 74 Filed 01/26/23 Page 3 of 8
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`TABLE OF AUTHORITIES
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`Cases
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`Invensys Sys., Inc. v. Emerson Elec. Co.,
`No. 6:12-CV-00799, 2014 WL 4477393 (E.D. Tex. July 25, 2014) ........................................... 4
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`Cheetah Omni, LLC v. Level 3 Commc’ns, Inc.,
`No. 5:06-CV-101, 2011 WL 13244215 (E.D. Tex. May 12, 2011) ............................................ 2
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`Clinton v. Jones,
`520 U.S. 681 (1997) .................................................................................................................... 2
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`Endotach LLC v. Cook Med. Inc.,
`No. 1:13-CV-01135-LJM, 2014 WL 852831 (S.D. Ind. Mar. 5, 2014) ...................................... 3
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`Lennon Image Techs., LLC v. Macy’s Retail Holdings, Inc.,
`No. 2:13-CV-00235-JRG, 2014 WL 4652117 (E.D. Tex. Sept. 18, 2014) ................................. 4
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`Sonrai Memory Ltd. v. LG Elecs. Inc.,
`No. 6:21-CV-00168-ADA, 2022 WL 2307475 (W.D. Tex. June 27, 2022) ............................... 4
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`Statutes and Rules
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`35 U.S.C. § 112 ............................................................................................................................... 3
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`ii
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`I.
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`INTRODUCTION
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`In Apple’s recent petition for mandamus, it requested that the Federal Circuit “grant
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`mandamus to ensure that transfer motions receive the priority they deserve.”1 In re Apple, No. 22-
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`162, at 4. Consequently, the Federal Circuit issued a mandate that the Court “postpone fact
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`discovery and other substantive proceedings until after consideration of Apple’s motion for
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`transfer.” Dkt. No. 70 at 6. The Court then issued an order that “the proceedings, including all
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`deadlines in the above captioned matter are STAYED as of the date of this Order, pending
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`resolution of the Motion to Transfer at ECF No. 24.” Dkt. No. 71. To that end, the instant stay is
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`in place precisely for the purpose of affording the Court the ability to rule on Apple’s pending
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`Motion to Transfer.
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`Apple’s rigorous attempts to transfer out of this Court cannot be reconciled with its current
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`request that this Court provide it with an indefinite stay of proceedings in this District. Rather
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`than prioritize its Motion to Transfer to the Northern District of California, Apple now wants this
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`Court to lift the very stay it perpetuated through its Appeal and grant it relief for an indefinite stay
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`of proceedings in the very District it has fought to escape. Either the parties are litigating in this
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`Court (as Aire maintains), or the parties are litigating in the Northern District of California (as
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`Apple urges). Depending on the Court’s determination of the appropriate venue, Apple can then
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`raise its arguments concerning its petitions for inter partes review. But Apple’s pending Motion
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`to Transfer should be decided first. Accordingly, Apple’s motion to modify the November 8, 2022
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`Stay Order (Dkt. No. 73, “Mot.”) should be denied.
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`1 All emphasis added unless stated otherwise.
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`1
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`II.
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`LEGAL STANDARD
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`District courts possess an inherent power to manage their own docket, including the power
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`to stay proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997). “[T]he Court also has the
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`discretion to lift a stay when circumstances have changed such that the Court’s reasons for
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`imposing the stay no longer exist or are inappropriate.” Cheetah Omni, LLC v. Level 3 Commc’ns,
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`Inc., No. 5:06-CV-101, 2011 WL 13244215, at *1 (E.D. Tex. May 12, 2011).
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`III. ARGUMENT
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`A.
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`The Court should resolve Apple’s transfer motion prior to considering a
`motion to stay pending resolution of Apple’s IPRs
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`The institution of Apple’s petitions for inter partes review does not bear on the purpose of
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`the current stay—for the Court to rule on Apple’s Motion to Transfer. Apple argues that the
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`institution of its petitions for inter partes review is important to the Court “for purposes of
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`managing its own workload and in determining the future schedule of this case.” Mot. at 1-2. But
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`Apple seeks to have this case transferred to the Northern District of California, which undoubtedly
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`impacts the Court’s “workload” and “future schedule of this case.” Given Apple’s repeated
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`insistence that its Motion to Transfer be decided before any further action in this case, the Court
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`should first determine whether to grant Apple’s request to transfer to the Northern District of
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`California (it should not). Depending on that ruling, either this Court or the transferee court may
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`then address Apple’s request to indefinitely stay these proceedings pending complete resolution of
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`all three petitions for inter partes review.
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`B.
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`The Court should provide Aire with the opportunity to provide a full
`response to Apple’s stay motion
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`Apple requests that Aire be afforded an opportunity to formally respond to Apple’s IPR
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`Stay Motion after the Court rules on its motion to lift the stay. Mot. at 3. Aire agrees. Should the
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`2
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`Court grant Apple’s request to lift the stay and file its IPR Stay Motion, Aire should be afforded
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`7-days from the Court’s order to file a 10-page response, consistent with Local Civil Rule 7-D.1.
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`As a preview, however, Apple’s IPR Stay Motion fails for several reasons. First, Apple’s
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`complaint that a stay is justified because “[n]either a Markman hearing nor a trial date is set” is
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`unpersuasive (Mot. at 2)—all claim construction issues have been briefed and a trial date can be
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`set by the Court at any time. Further, the parties have already exchanged and responded to requests
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`for production and interrogatories. Hollander Decl. ¶ 2. Indeed, Apple has already produced more
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`than 500,000 pages of documents and Aire’s source code experts made six trips to review Apple’s
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`source code, as well as a seventh trip to review third-party source code. Id. Fact discovery is in
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`its advanced stages and Aire is prepared to pick up fact discovery right as the parties left off,
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`proceed swiftly to expert discovery, and participate in a trial in this matter.
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`Further, Apple’s argument that “substantial simplification is virtually guaranteed” by a stay
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`pending resolution of its petitions for inter partes review is unpersuasive. Mot. at 2. For example,
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`Apple has asserted over 10 supposed prior art systems in its preliminary invalidity contentions that
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`will need to be resolved by this Court should one or more of Apple’s petitions be denied. Hollander
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`Decl. ¶ 3. Apple is also advancing § 112 arguments that cannot be resolved through a petition for
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`inter partes review. Id.; see also Endotach LLC v. Cook Med. Inc., No. 1:13-CV-01135-LJM,
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`2014 WL 852831, at *5 (S.D. Ind. Mar. 5, 2014) (“[defendant] is relying on 35 U.S.C. § 112
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`invalidity claims that cannot be addressed in an IPR”).
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`Finally, Apple’s argument that “[u]ndue prejudice” is “minimal or nonexistent” is also
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`wrong. For example, irrespective of the fact that Aire is not seeking injunctive relief, a multi-year
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`stay will unduly prejudice Aire’s “interest in the timely enforcement of its patent right”—which
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`has already been unnecessarily delayed by Apple’s decision to seek mandamus review. Lennon
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`Image Techs., LLC v. Macy’s Retail Holdings, Inc., No. 2:13-CV-00235-JRG, 2014 WL 4652117,
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`at *2 (E.D. Tex. Sept. 18, 2014). Further, monetary relief is not sufficient because “a stay risks
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`the loss of testimonial and documentary evidence potentially valuable to [Aire]’s case.” Sonrai
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`Memory Ltd. v. LG Elecs. Inc., No. 6:21-CV-00168-ADA, 2022 WL 2307475, at *2 (W.D. Tex.
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`June 27, 2022). Finally, a significant delay in the resolution of this action creates uncertainty as
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`to the validity and strength of Aire’s patents also has an adverse impact on Aire’s ability to
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`negotiate with prospective licensees and may harm existing relationships with current licensees.
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`Cf. Invensys Sys., Inc. v. Emerson Elec. Co., No. 6:12-CV-00799, 2014 WL 4477393, at *2 (E.D.
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`Tex. July 25, 2014) (“[W]hile [plaintiff] may be able to collect damages for the duration of the
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`stay, [it] may lose valuable customers and goodwill during the stay of litigation. Thus, ‘damages
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`alone may not fully compensate [plaintiff] for the delay resulting from [IPR].’”) (citation omitted).
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`As such, an indefinite stay pending resolution of Apple’s petitions for inter partes review is not
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`warranted and the current stay should not be lifted to address Apple’s putative motion.
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`IV. CONCLUSION
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`For the reasons stated above, Apple’s Motion to Modify November 8, 2022 Stay Order
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`(Dkt. No. 73) should be denied.
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`Case 6:21-cv-01101-ADA Document 74 Filed 01/26/23 Page 8 of 8
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`Dated: January 26, 2023
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`Respectfully submitted,
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`By: /s/ Brett E. Cooper
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`Brett E. Cooper (NY SBN 4011011)
`bcooper@bc-lawgroup.com
`Seth Hasenour (TX SBN 24059910)
`shasenour@bc-lawgroup.com
`Drew B. Hollander (NY SBN 5378096)
`dhollander@bc-lawgroup.com
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`BC LAW GROUP, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`Tel.: (212) 951-0100
`Fax: (646) 293-2201
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`Attorneys for Plaintiff Aire Technology
`Limited
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`CERTIFICATE OF SERVICE
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`I certify that this document is being served upon counsel of record for Defendant on
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`January 26, 2023 via electronic service.
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`/s/ Brett E. Cooper
` Brett E. Cooper
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