Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 1 of 17
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`RFCyber CORP.,
`
`Plaintiff,
`
`v.
`
`VISA U.S.A. Inc.,
`
`Defendant.
`
`CASE NO.: 6:22-cv-00697-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANT VISA U.S.A. INC.’S OPPOSED MOTION TO STAY
`PENDING INTER PARTES REVIEW
`
`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 2 of 17
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 2
`
`A.
`
`B.
`
`C.
`
`This Case Is In The Initial Stages ........................................................................... 2
`
`Status Of Related Cases .......................................................................................... 2
`
`IPR Proceedings Have Been Instituted, With An Anticipated Decision In
`Two Months ............................................................................................................ 3
`
`LEGAL STANDARDS ...................................................................................................... 3
`
`ARGUMENT ...................................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`A Stay Will Not Unduly Prejudice RFCyber .......................................................... 4
`
`The Early Stage Of This Case Favors A Stay ......................................................... 6
`
`A Stay Will Simplify The Issues ............................................................................ 7
`
`The Totality Of The Circumstances Weighs In Favor Of A Stay ......................... 10
`
`V.
`
`CONCLUSION ................................................................................................................. 11
`
`i
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 3 of 17
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Advanced Micro Devices, Inc. v. Mediatek Inc., No. 19-70-CFC,
`2019 WL 4082836 (D. Del. Aug. 29, 2019) ........................................................................7
`Bell Semiconductor, LLC v. NXP Semiconductors, N.V., No. 1:20-CV-611-LY,
`2022 WL 1447948 (W.D. Tex. Feb. 7, 2022) ................................................................8, 10
`Canon Inc. v. Avigilon USA Corp. Inc., No. 3:17-CV-2733-N,
`2019 WL 13156692 (N.D. Tex. Jan. 3, 2019) .....................................................................8
`Clinton v. Jones,
`520 U.S. 681 (1997) .............................................................................................................3
`Coho Licensing LLC v. Glam Media, No. C 14-01576 JSW,
`2014 WL 4681699 (N.D. Cal. Sept. 17, 2014) ..................................................................10
`Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. A-13-CA-800-SS,
`2015 WL 3773014 (W.D. Tex. June 16, 2015) ...................................................5, 7, 10, 11
`e-Watch, Inc. v. ACTi Corp., Inc., No. SA-12-CA-695-FB,
`2013 WL 6334372 (W.D. Tex. Aug. 9, 2013)
`adopted 2013 WL 6334304 (W.D. Tex. Aug. 26, 2013) .............................................4, 8, 9
`E-Watch, Inc. v. Lorex Canada, Inc., No. H-12-3314,
`2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) ....................................................................8
`Employment Law Compliance, Inc. v. Compli, Inc., No. 3:13-cv-3574-N, 2014
`WL 3739770 (N.D. Tex. May 27, 2014) .............................................................................6
`Evolutionary Intelligence, LLC v. Apple, Inc., No. C 13-04201 WHA,
`2014 WL 93954 (N.D. Cal. Jan. 9, 2014) ......................................................................8, 10
`Evolutionary Intelligence, LLC v. Facebook, Inc., No. C 13-4202 SI,
`2014 WL 261837 (N.D. Cal. Jan. 23, 2014) ........................................................................5
`Fairfield Indus. Inc. v. Seabed Geosolutions (US) Inc., No. H-17-1458,
`2019 WL 212333 (S.D. Tex. Jan. 16, 2019) ........................................................................9
`Keurig, Inc. v. Sturm Foods, Inc.,
`732 F.3d 1370 (Fed. Cir. 2013)............................................................................................9
`Kirsch Rsch. and Dev., LLC v. Tarco Specialty Prods., Inc., No. 6:20-cv-00318-
`ADA,
`2021 WL 4555804 (W.D. Tex. Oct. 4, 2021) (Albright, J.) ...................................... passim
`LifeScan Scotland, Ltd. v. Shasta Techs., LLC,
`734 F.3d 1361 (Fed. Cir. 2013)............................................................................................9
`
`ii
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 4 of 17
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`Micrografx, LLC v. Google, Inc., No. 3:13-cv-3595-N,
`2014 WL 12580455 (N.D. Tex. July 9, 2014) .................................................................4, 6
`Murata Mach. USA v. Daifuku Co., Ltd.,
`830 F.3d 1357 (Fed. Cir. 2016)............................................................................................3
`NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB,
`2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ....................................................................4
`PSC Inc. v. Symbol Techs
`26 F. Supp. 2d 505, 510 (W.D.N.Y.1998). ..........................................................................9
`Select Comfort Corp. v. Tempur Sealy Int’l, Inc., No. 14-245,
`2014 WL 12600114 (D. Minn. Oct. 10, 2014) ..................................................................10
`Sonrai Memory Ltd. v. Western Digital Techs., Inc., No. 6:21-CV-01168-ADA,
`2022 WL 3108818 (W.D. Tex. Aug. 4, 2022) (Albright, J.) ...............................................5
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)............................................................................................5
`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) (Albright, J.) ..................................6, 7, 8, 11
`STATUTES
`35 U.S.C. § 316(a)(11) .....................................................................................................................3
`
`iii
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 5 of 17
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`I.
`
`INTRODUCTION
`
`The Court should enter a stay in this case in furtherance of judicial economy and because
`
`it would not prejudice Plaintiff. The Patent Trial and Appeal Board (“PTAB”) instituted inter
`
`partes review (“IPR”) of two of the asserted patents in this case, finding there is a reasonable
`
`likelihood that claims asserted here are invalid. This case has not entered discovery, and the
`
`PTAB’s final written decision is expected in under two months. As such, Defendant Visa U.S.A.
`
`Inc. (“Visa”) respectfully requests a stay of this action pending final disposition of Apple Inc. v.
`
`RFCyber Corp., IPR2022-00412 (IPR of U.S. Patent No. 9,189,787) and Apple Inc. v. RFCyber
`
`Corp., IPR2022-00413 (IPR of U.S. Patent No. 9,240,009) (collectively, “the IPR proceedings”),
`
`expected in July 2023. As set forth below, factors considered by this Court when deciding whether
`
`to exercise discretion and stay a case weigh in favor of staying this action.
`
`First, granting the requested stay will not prejudice Plaintiff RFCyber Corp. (“Plaintiff” or
`
`“RFCyber”) or result in any tactical disadvantage. RFCyber could still seek monetary damages,
`
`and there is no “undue prejudice” associated with any such delay. Kirsch Rsch. and Dev., LLC v.
`
`Tarco Specialty Prods., Inc., No. 6:20-cv-00318-ADA, 2021 WL 4555804, at *2 (W.D. Tex. Oct.
`
`4, 2021) (Albright, J.). Second, this case is still in its infancy. Because the parties are still at the
`
`pleading stage, no trial date has been set, and no scheduling order entered, granting the requested
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`stay will not disrupt the litigation or create inefficiencies. Third, the IPR proceedings (instituted
`
`in connection with an earlier-filed related case asserting the same patents1) are likely to simplify
`
`the issues in this case as the PTAB already determined there is a reasonable likelihood that claims
`
`1 In RFCyber Corp. v. Apple, Inc., 6:21-cv-00916-ADA (W.D. Tex. Sept. 7, 2021) (“Apple
`Litigation”), RFCyber is asserting the same patents asserted against Visa and seeking damages
`for many of the same transactions at issue here. Compare Apple Litigation, Dkt. 18 (12/2/21
`Am. Compl. against Apple) with Dkt. 1 (Compl. against Visa).
`1
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 6 of 17
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`of two of the asserted patents are invalid. In contrast, proceeding with this case risks complicating
`
`issues, duplicating efforts, wasting time and resources, and increasing the likelihood of
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`inconsistent results.
`
`Because the totality of the circumstances favors a stay, Visa respectfully requests that the
`
`Court stay this action pending disposition of the IPR Proceedings.
`
`II.
`
`BACKGROUND
`
`A.
`
`This Case Is In The Initial Stages
`
`Plaintiff filed this action on June 28, 2022, accusing Visa of infringing U.S. Patent Nos.
`
`8,118,218 (the “’218 Patent”), 8,448,855 (the “’855 Patent”), 9,189,787 (the “’787 Patent”), and
`
`9,240,009 (the “’009 Patent”) (collectively, the “Asserted Patents”). Dkt. 1. On April 26, 2023,
`
`the Court denied Visa’s Motion to Dismiss, and Visa filed its answer on May 24, 2023. Dkt. 18.
`
`Although the parties recently filed the Case Readiness Status Report (“CRSR”) (Dkt. 16), no
`
`proposed scheduling order has been entered, and no trial date has been set. The vast majority of
`
`discovery and litigation has not commenced.
`
`B.
`
`Status Of Related Cases
`
`From August 2020 to June 2022, RFCyber filed four other complaints alleging
`
`infringement of the Asserted Patents against Google LLC (“Google”), Samsung Electronics Co.
`
`Ltd. (“Samsung”), LG Electronics, Inc. (“LG”) and Apple, Inc. (“Apple”).2 RFCyber has settled
`
`the litigations against Google, Samsung, and LG, presumably granting each a license to the
`
`2 RFCyber Corp. v. Google LLC et al., 2:20-cv-00274-JRG-RSP, Dkt. 1 (E.D. Tex. Aug. 21,
`2020); RFCyber Corp. v. Samsung Electronics Co. Ltd. et al., 2:20-cv-00335-JRG-RSP, Dkt. 1
`(E.D. Tex. Oct. 16, 2020); RFCyber Corp. v. LG Electronics, Inc., 2:20-cv-00336-JRG-RSP,
`Dkt. 1 (E.D. Tex. Oct. 16, 2020); RFCyber Corp. v. Apple, Inc., 6:21-cv-00916-ADA, Dkt. 1
`(W.D. Tex. Sept. 7, 2021).
`
`2
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 7 of 17
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`Asserted Patents.3 RFCyber’s case against Visa is the last one filed, post-dating its lawsuits against
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`each of Google, Samsung, LG, and Apple.
`
`C.
`
`IPR Proceedings Have Been Instituted, With An Anticipated Decision In
`Two Months
`
`Before this case was filed, on January 14, 2022, third-party Apple petitioned the PTAB to
`
`institute IPR of all claims of the ’787 and ’009 Patents, which were asserted against Apple in
`
`connection with RFCyber’s December 2, 2021 Amended Complaint pending before this Court.
`
`Ex. 1 (Apple Inc. v. RFCyber Corp., IPR2022-00412, Paper 1 (PTAB Jan. 14, 2022)); Ex. 2
`
`(Apple Inc. v. RFCyber Corp., IPR2022-00413, Paper 1 (PTAB Jan. 14, 2022)); see also Apple
`
`Litigation, Dkt. 18.4 Over ten months ago, the PTAB granted institution on all claims of both
`
`patents. Ex. 3 (IPR2022-00412, Paper 11 (PTAB Jul. 21, 2022)); Ex. 4 (IPR2022-00413, Paper
`
`12 (PTAB Jul. 21, 2022)). The PTAB is expected to issue final written decisions by July 2023.
`
`See 35 U.S.C. § 316(a)(11).
`
`III.
`
`LEGAL STANDARDS
`
`A district court has the inherent power to control its own docket, including the power to
`
`stay proceedings before it. Clinton v. Jones, 520 U.S. 681, 706 (1997) (“The District Court has
`
`broad discretion to stay proceedings as an incident to its power to control its own docket.”). This
`
`discretionary authority to stay exists when there is a pending IPR of the asserted patent(s). See
`
`Murata Mach. USA v. Daifuku Co., Ltd., 830 F.3d 1357, 1361-62 (Fed. Cir. 2016) (affirming
`
`district court’s refusal to lift stay pending IPR). A stay is particularly justified when “the outcome
`
`3 See RFCyber Corp. v. Google LLC et al., 2:20-cv-00274-JRG-RSP, Dkt. 269 (E.D. Tex. Mar.
`28, 2022); RFCyber Corp. v. Samsung Electronics Co. Ltd. et al, 2:20-cv-00335, Dkts. 29-30
`(E.D. Tex. Feb. 11, 2022) (E.D. Tex. Mar. 6, 2023); RFCyber Corp. v. LG Electronics, Inc.,
`2:20-cv-00336, Dkt. 36 (E.D. Tex. Sept. 15, 2021).
`4 “Ex.” refers to the Exhibits to the Declaration of Lucy Yen in support of this motion.
`3
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 8 of 17
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`of a PTO proceeding is likely to assist the court in determining patent validity or eliminate the
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`need to try infringement issues.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 2015
`
`WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015).
`
`District courts typically consider three factors when weighing a stay pending IPR: “(1)
`
`whether the stay will unduly prejudice the nonmoving party, (2) whether the proceedings 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, 2021 WL 4555804, at *2 (Albright, J.). “Essentially, courts determine whether the benefits
`
`of a stay outweigh the inherent costs based on these factors.” Id. The party seeking a stay bears
`
`the burden of showing that a stay is appropriate. e-Watch, Inc. v. ACTi Corp., Inc., No. SA-12-
`
`CA-695-FB, 2013 WL 6334372, at *8-9 (W.D. Tex. Aug. 9, 2013), adopted 2013 WL 6334304
`
`(W.D. Tex. Aug. 26, 2013).
`
`IV.
`
`ARGUMENT
`
`A.
`
`A Stay Will Not Unduly Prejudice RFCyber
`
`Granting the requested stay will not unduly prejudice RFCyber. It is well settled that delay
`
`caused by the IPR process, without more, does not justify denying a stay. See e-Watch, 2013 WL
`
`6334372, at *9 (“[T]he mere fact and length of any delay [] does not demonstrate prejudice
`
`sufficient to deny [a] request for a stay.”). The PTAB has already instituted IPR of the ’787 and
`
`’009 Patents, and a final written decision is expected in less than two months. With the IPR
`
`decisions expected shortly, there is virtually no risk of “loss of testimonial and documentary
`
`evidence potentially valuable to [RFCyber’s] case.” See Kirsch, 2021 WL 4555804, at *2
`
`(Albright, J.); Micrografx, LLC v. Google, Inc., No. 3:13-cv-3595-N, 2014 WL 12580455, at *1
`
`(N.D. Tex. July 9, 2014) (“[I]nter partes review was designed to create efficiencies and proceed in
`
`a timely fashion.”).
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`4
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 9 of 17
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`RFCyber has also not demonstrated any “need for an expeditious resolution of its claim[s].”
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`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). RFCyber waited
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`over six years after issuance of all the Asserted Patents (see Dkt. 1, Exs. A-D),5 and nearly two
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`years after filing its first litigation asserting these same patents (see RFCyber Corp. v. Google LLC
`
`et al, 2:20-cv-00274 (E.D. Tex., Filed Aug. 21, 2020)), to file its Complaint against Visa. See
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`VirtualAgility Inc., 759 F.3d at 1318-19 (waiting a year after patent issuance to file suit weighed
`
`against claims of undue prejudice).
`
`Moreover, RFCyber itself concedes the sufficiency of monetary relief. Courts have
`
`consistently found that the delay of potential monetary relief is not unduly prejudicial. See e.g.,
`
`Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. A-13-CA-800-SS, 2015 WL 3773014, at *2 (W.D.
`
`Tex. June 16, 2015) (“[M]ere delay in collecting [monetary] damages does not constitute undue
`
`prejudice”); Evolutionary Intelligence, LLC v. Facebook, Inc., No. C 13-4202 SI, 2014 WL
`
`261837, at *3 (N.D. Cal. Jan. 23, 2014) (granting pre-institution stay, noting “[c]ourts have
`
`consistently found that a patent licensor cannot be prejudiced by a stay because monetary damages
`
`provide adequate redress for infringement.”). “[T]he weight of [RFCyber]’s interest in timely
`
`enforcement is diminished here where a stay would merely delay [RFCyber]’s potential monetary
`
`recovery.” Kirsch, 2021 WL 4555804, at *2 (Albright, J.); Sonrai Memory Ltd. v. Western Digital
`
`Techs., Inc., No. 6:21-CV-01168-ADA, 2022 WL 3108818, at *2 (W.D. Tex. Aug. 4, 2022)
`
`(Albright, J.) (same).
`
`Notably, RFCyber never specifically requested any injunctive relief in its Complaint. See
`
`Dkt. 1 at 37-38 (seeking monetary damages, and including only boilerplate catch-all for “[s]uch
`
`5 Dkt. 1-1, Ex. A (’218 Patent (issued Feb. 21, 2012)); Dkt. 1-2, Ex. B (’855 Patent (issued May
`28, 2013)); Dkt. 1-3, Ex. C (’787 Patent (issued Nov. 17, 2015)); Dkt. 1-4, Ex. D (’009 Patent
`(issued Jan. 19, 2016)).
`
`5
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 10 of 17
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`other equitable relief which may be requested and to which the Plaintiff is entitled”). Nor could
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`RFCyber ever demonstrate that it is entitled to injunctive relief. RFCyber has not, and cannot,
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`allege that it competes with Visa. Indeed, RFCyber has not alleged that it makes any products,
`
`much less any product similar to Visa’s accused products. See Micrografx, LLC, 2014 WL
`
`12580455, at *1-2 (granting stay pending IPR when “[Plaintiff] does not seek injunctive relief and
`
`does not practice the patents-in-suit”); see also Employment Law Compliance, Inc. v. Compli, Inc.,
`
`No. 3:13-cv-3574-N, 2014 WL 3739770, at *2 (N.D. Tex. May 27, 2014) (Plaintiff “fail[ed] to
`
`show that the parties are direct competitors or how it would be adversely affected by a stay.”).
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`Additionally, RFCyber’s willingness to settle with numerous other purported infringers is direct
`
`evidence that monetary relief is an adequate remedy.
`
`A stay would also not present a clear tactical disadvantage to RFCyber. RFCyber filed this
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`lawsuit after its Complaint against Apple and after Apple filed its IPR petitions. Thus, RFCyber
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`had notice that the validity of the ’787 and ’009 Patents was being challenged, could anticipate
`
`that Visa would seek a stay, but still chose to file this Complaint. Xylon Licensing LLC v. Lone
`
`Star Nat’l Bancshares-Texas, Inc., No. 6:21-CV-00302-ADA, 2022 WL 2078030, at *2 (W.D.
`
`Tex. June 8, 2022) (Albright, J.) (“[T]he known impending PTAB decision contrasted with the
`
`uncertain distant trial date seriously diminishes any prejudice to [Plaintiff].”). Visa proposed a
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`stay to RFCyber during meet and confers regarding the CRSR and in a meet and confer on June 7,
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`2023. While RFCyber indicated it would oppose a stay, it did not identify any specific claim of
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`prejudice.
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`This factor, therefore, weighs in favor of a stay.
`
`B.
`
`The Early Stage Of This Case Favors A Stay
`
`This case is in its earliest stage. Claim construction and fact discovery have not
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`commenced, no trial date has been set, and no scheduling order has been entered. See Advanced
`
`6
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 11 of 17
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`Micro Devices, Inc. v. Mediatek Inc., No. 19-70-CFC, 2019 WL 4082836, at *2 (D. Del. Aug. 29,
`
`2019). Moreover, the parties have not engaged in a Markman hearing; though, even in cases where
`
`the parties have gone through the Markman hearing, courts in this district have found that “it makes
`
`no sense for the Court to proceed in parallel with the PTAB” because “[t]he finality of any
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`judgment rendered by this Court will be dubious so long as the PTAB retains authority to review,
`
`and therefore invalidate, the asserted claims . . . .” Crossroads, 2015 WL 3773014, at *4.
`
`Neither the parties nor the Court have expended significant resources on this case, and no
`
`inefficiency would result by instituting a stay at this early stage. Xylon Licensing, 2022 WL
`
`2078030, at *3 (Albright, J.) (granting stay when “[l]ittle-to-no judicial resources have been
`
`expended on this case,” and resources will be preserved “in granting the stay by not ruling on
`
`unnecessary issues” and by “preventing resource expenditure for duplicative findings.”). Nor has
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`RFCyber shown any urgency in litigating this case. See supra p. 5.
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`Accordingly, this factor, too, weighs in favor of a stay.
`
`C.
`
`A Stay Will Simplify The Issues
`
`“The most important factor bearing on whether to grant a stay in [a] case is the prospect
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`that the inter partes review proceeding will result in simplification of issues before the Court.”
`
`Kirsch, 2021 WL 4555804, at *3 (Albright, J.). This is true, here, where RFCyber asserts
`
`infringement of the ’787 and ’009 Patents, Visa asserts affirmative defenses of invalidity of those
`
`patents (see Dkt. 18 at 8-9 (Second through Fifth Separate Defenses)), and the PTAB has already
`
`found that there is “a reasonable likelihood that Petitioner would prevail in establishing the
`
`unpatentability” of claims of those very patents. See Exs. 3 & 4 at 3.
`
`Given that two of the four related patents are under review, a stay will simplify the issues
`
`in the case because the IPR proceedings may, for example, “render[] some or all of Plaintiff’s
`
`infringement claims moot … and provid[e] the Court with PTAB’s expert opinion on the claims
`
`7
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 12 of 17
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`at issue.” Canon Inc. v. Avigilon USA Corp. Inc., No. 3:17-CV-2733-N, 2019 WL 13156692, at
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`*1 (N.D. Tex. Jan. 3, 2019) (granting stay of entire litigation pending IPR of two of the five
`
`asserted patents); see also Bell Semiconductor, LLC v. NXP Semiconductors, N.V., No. 1:20-CV-
`
`611-LY, 2022 WL 1447948, at *2 (W.D. Tex. Feb. 7, 2022) (staying entirety of action “[a]lthough
`
`four of the seven patents at issue [were] not subject to IPR proceedings” because “the potential
`
`resolution of three patent disputes through IPRs would significantly reduce the number of claims
`
`that proceed to trial”); e-Watch, 2013 WL 6334372, at *7 (“[I]f the USPTO invalidates any of the
`
`[] patents-in-suit at issue or changes the scope and terms of any claim, the matters at issue in this
`
`Court will change.”). The PTAB’s final decision will also provide claim construction analysis to
`
`supplement the intrinsic record that this Court could ultimately consider in construing claims and
`
`considering invalidity defenses, not to mention that the patent owner could make statements
`
`regarding the patent’s claims that could affect how the terms of those claims should be construed.
`
`See Evolutionary Intelligence, LLC v. Apple, Inc., No. C 13-04201 WHA, 2014 WL 93954, at *3
`
`(N.D. Cal. Jan. 9, 2014) (The IPR record “may also clarify claim construction positions for the
`
`parties” and “encourage settlement.”).
`
`In issuing an IPR stay, the court considers the potential for “simplification of the issues,”
`
`not “total resolution of the case,” and any decision on the ’787 and ’009 Patents will undoubtedly
`
`simplify the issues and assist the Court. E-Watch, Inc. v. Lorex Canada, Inc., No. H-12-3314,
`
`2013 WL 5425298, at *2 (S.D. Tex. Sept. 26, 2013); Xylon Licensing, 2022 WL 2078030, at *3
`
`(Albright, J.) (granting stay of entire litigation pending IPR of only some of the asserted patent
`
`claims as “the PTAB’s final decision could provide information relevant to claim construction.”).
`
`Moreover, because all four Asserted Patents are related, the PTAB and RFCyber’s statement on
`
`claim construction in the IPR proceedings will potentially bear on other asserted claims in this
`
`8
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 13 of 17
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`case, not just those at issue for the ’787 and ’009 Patents. See Fairfield Indus. Inc. v. Seabed
`
`Geosolutions (US) Inc., No. H-17-1458, 2019 WL 212333, at *2 (S.D. Tex. Jan. 16, 2019) (inter
`
`partes review of a subset of asserted patents simplifies claim construction for all related patents-
`
`in-suit).
`
`The resolution of the IPR proceedings may also lead to a settlement agreement with, and
`
`license to, Apple, similar to the settlements and presumed licenses entered with Samsung and
`
`Google, see supra pp. 2-3. Such a settlement would have a significant impact on Visa’s patent
`
`exhaustion defense (Dkt. 18 at 9) as uses of Samsung, Google, and Apple’s presumably-licensed
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`payment products and services in conjunction with the Visa Token Service account for virtually
`
`all of the alleged infringing uses of Visa’s accused products. See Keurig, Inc. v. Sturm Foods,
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`Inc., 732 F.3d 1370, 1373-74 (Fed. Cir. 2013) (authorized sale of coffee brewers exhausted claims
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`against manufacturers of coffee cartridges used in brewers); LifeScan Scotland, Ltd. v. Shasta
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`Techs., LLC, 734 F.3d 1361, 1372-74 (Fed. Cir. 2013) (authorized sale or distribution of glucose
`
`meters exhausted claims against test strips with which meter was intended to be used); PSC Inc. v.
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`Symbol Techs., Inc., 26 F. Supp. 2d 505, 510 (W.D.N.Y.1998) (a party’s “attempt[] to collect
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`royalties from two parties for the same product violates the exhaustion doctrine, and impermissibly
`
`extends the scope of the patent grants.”).
`
`While Visa is not a party-in-interest to the pending IPR, “[i]t is not necessary for [Visa] to
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`be a party to IPR proceedings for the USPTO’s substantive decisions . . . to have an effect on the
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`patent issues to be litigated in this case.” e-Watch, 2013 WL 6334372, at *7. A favorable
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`determination from the PTAB can still resolve many issues in this case, if not resolving the
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`litigation entirely. Id. (finding that stay was appropriate based on IPR petitions even when
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`defendant would not have been subject to IPR estoppel); see also Bell Semiconductor, 2022 WL
`
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 14 of 17
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`1447948, at *2 (same).
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`In contrast, denying a stay in this case may lead to inconsistent results across proceedings,
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`including possibly conflicting invalidity determinations and inconsistent claim constructions of
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`claim terms, all of which could “prove to be extraordinarily wasteful of both the parties’ resources
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`and the Court’s resources.” Crossroads, 2015 WL 3773014, at *3; see also Select Comfort Corp.
`
`v. Tempur Sealy Int’l, Inc., No. 14-245 (JNE/JSM), 2014 WL 12600114, at *8 (D. Minn. Oct. 10,
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`2014) (“not granting a stay could result in the parties and Court wasting significant time and
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`resources”); Coho Licensing LLC v. Glam Media, No. C 14-01576 JSW, 2014 WL 4681699, at *2
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`(N.D. Cal. Sept. 17, 2014) (“A stay may also be granted in order to . . . avoid needless waste of
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`judicial resources.”). There is “little” if any benefit to litigating validity in district court while the
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`same issues are being litigated before the PTAB. See Evolutionary Intelligence v. Apple, Inc.,
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`2014 WL 93954, at *3 (“There is also little benefit to be gained from having two forums review
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`the validity of the same claims at the same time.”).
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`The simplification of issues and judicial efficiencies of a stay will substantially reduce the
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`burdens on the Court and the parties, even in the event that any litigation after the stay is necessary.
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`Therefore, this factor weighs in favor of a stay.
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`D.
`
`The Totality Of The Circumstances Weighs In Favor Of A Stay
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`All three factors (including the “most important factor,” Kirsch, 2021 WL 4555804, at *3
`
`(Albright, J.)) weigh in favor of granting a stay. Any alleged undue prejudice is mitigated by
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`RFCyber’s ability to be satisfied by monetary remedies and the fact that a stay will simplify the
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`litigation issues. In sum, a stay is warranted because the PTAB’s final written decision is expected
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`in under two months, causing minimal delay or risk of prejudice, especially at this early stage of
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`the case where only monetary damages are at issue. In contrast, proceeding in this litigation could
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`“prove to be extraordinarily wasteful of both the parties’ resources and the Court’s resources.”
`
`10
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 15 of 17
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`Crossroads, 2015 WL 3773014, at *3. The parties and the Court should avoid wasting resources
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`on litigation that will be simplified by the invalidation of asserted claims or further elucidation on
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`claim construction. See Xylon Licensing, 2022 WL 2078030, at *3 (Albright, J.).
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`V.
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`CONCLUSION
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`For the foregoing reasons, Visa respectfully requests the Court stay this case in its entirety
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`until the PTAB resolves the pending IPR proceedings on the ’787 and ’009 Patents. Visa further
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`requests that the Court direct the parties to file a joint status report within five business days of the
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`PTAB’s ultimate resolution of the petitions and, if warranted, allow the parties to seek a further
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`stay.
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`11
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`

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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 16 of 17
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`Dated: June 8, 2023
`
`Respectfully submitted,
`/s/ James Yoon
`James C. Yoon (CA State Bar No. 177155)
`jyoon@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Fax: (650) 493-6811
`Jamie Y. Otto (pro hac vice)
`jotto@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, Suite 1550
`Los Angeles, California 90071
`Telephone: (323) 210-2900
`Fax: (866) 974-7329
`
`Lucy Yen (pro hac vice pending)
`Cassie L. Black (pro hac vice pending)
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas, 40th Fl.
`New York, NY 10019
`(212) 999-5800 (telephone)
`(866) 974-7329 (facsimile)
`lyen@wsgr.com
`cblack@wsgr.com
`
`Attorneys for Defendant VISA U.S.A. Inc.
`
`12
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`Case 6:22-cv-00697-ADA Document 22 Filed 06/08/23 Page 17 of 17
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`CERTIFICATE OF SERVICE
`
`The undersigned, an attorney, hereby certifies that a true and correct copy of the foregoing
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`document has been served on all counsel of record via electronic mail on June 8, 2023.
`
`By: /s/ James C. Yoon
`James C. Yoon
`
`.
`
`