Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CASE NO.: 6:22-cv-00697
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`JURY TRIAL DEMANDED
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`RFCyber CORP.,
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`Plaintiff,
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`VISA U.S.A. Inc.,
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`Defendant.
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`v.
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`DEFENDANT VISA U.S.A. INC.’S REPLY IN FURTHER SUPPORT OF ITS OPPOSED
`MOTION TO STAY PENDING INTER PARTES REVIEW
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`I.
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`II.
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 2 of 10
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .............................................................................................................. 1
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`ALL THREE FACTORS SUPPORT A STAY .................................................................. 2
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`A.
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`B.
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`C.
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`A Stay Will Simplify The Issues ............................................................................ 2
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`Plaintiff Will Not Suffer Any Prejudice From a Stay ............................................. 4
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`The Early Stage Of This Case Favors A Stay ......................................................... 5
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`III.
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`CONCLUSION ................................................................................................................... 6
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`i
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 3 of 10
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`Bell Semiconductor, LLC v. NXP Semiconductors, N.V., No. 1:20-CV-611-LY,
`2022 WL 1447948 (W.D. Tex. Feb. 7, 2022) ......................................................................3
`Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. A-13-CA-800-SS,
`2015 WL 3773014 (W.D. Tex. June 16, 2015) ...............................................................4, 5
`e-Watch, Inc. v. ACTi Corp., Inc., No. SA-12-CA-695-FB,
`2013 WL 6334372 (W.D. Tex. Aug. 9, 2013) .................................................................2, 3
`Evolutionary Intelligence, LLC v. Apple, Inc., No. C 13-04201-WHA,
`2014 WL 93954 (N.D. Cal. Jan. 9, 2014) ............................................................................2
`Kerr Mach. Co. v. Vulcan Indus. Holdings, LLC, No. 6-20-CV-00200-ADA,
`2021 WL 1298932, at *2 (W.D. Tex. Apr. 7, 2021) ........................................................4, 5
`Sonrai Memory Ltd. v. L.G. Elecs. Inc., No. 6:21-CV-00168-ADA,
`2022 WL 2307475, at *3 (W.D. Tex. June 27, 2022)......................................................3, 4
`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.) ............................................1, 2
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`ii
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 4 of 10
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`I.
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`INTRODUCTION
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`RFCyber’s Opposition (Dkt. No. 28 (“Opp.”)) fails to rebut the compelling reasons
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`justifying a stay of this action and asserts unsupported arguments that have already been rejected
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`in this Court. First, IPR Proceedings do not need to fully resolve the dispute between the parties
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`to warrant a stay. Instead, courts evaluate “whether the stay will likely result in simplifying the
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`case before the court.” Xylon Licensing LLC v. Lone Star Nat’l Bancshares-Texas, Inc., No.
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`6:21-CV-00302-ADA, 2022 WL 2078030, at *1-2 (W.D. Tex. June 8, 2022) (Albright, J.). The
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`outcome of the IPR Proceedings, expected in only one month on two of the four asserted patents,
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`will undoubtedly achieve that result.
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`Second, RFCyber’s assertion that the scope of discovery will not change regardless of the
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`IPR decisions is inaccurate and illogical. A finding of invalidity on two asserted patents – as
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`well as the benefit of the PTAB’s analysis on the language of the claims – will undoubtedly
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`impact discovery and other Markman-related efforts, including the scope and substance of
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`upcoming invalidity contentions and proposed claim constructions.
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`Third, RFCyber barely engages with the other two factors relevant to a motion to stay,
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`both of which weigh in favor of granting the motion. RFCyber will not suffer any prejudice
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`from a stay, and this case is in its infancy. RFCyber’s boilerplate recitations of the law on these
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`factors does nothing to dispute that, and RFCyber makes no evidentiary showing, or even
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`attorney argument, to support any alleged prejudice at this early stage in the case.
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`Because all three factors and the totality of the circumstances support a stay, Visa
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`respectfully requests that the Court stay this action pending decisions in the IPR Proceedings.
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`1
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 5 of 10
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`II.
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`ALL THREE FACTORS SUPPORT A STAY
`A.
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`A Stay Will Simplify The Issues
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`As described in Visa’s Opposed Motion to Stay Pending Inter Partes Review (Dkt. 22
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`(“Mot.”)), a stay pending the IPR Proceedings will unquestionably simplify the issues before the
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`Court. RFCyber asserts infringement of U.S. Patent No. 9,189,787 (the “’787 Patent”) and U.S.
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`Patent No. 9,240,009 (the “’009 Patent); Visa asserts affirmative defenses of invalidity of those
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`patents (see Dkt. 18 at 8-9 (Second through Fifth Separate Defenses)); and the PTAB has already
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`found that there is “a reasonable likelihood that Petitioner would prevail in establishing the
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`unpatentability” of claims of those very patents. See Dkts. 22-4 & 22-5, Exs. 3 & 4 at 3. Indeed,
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`the outcome of the IPR Proceedings may very well result in resolution of RFCyber’s claims for
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`infringement of the ’787 and ’009 Patents, if not all asserted patents (see Mot. at 9)—a point that
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`RFCyber does not address in its opposition. Further, even if this case were to continue following
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`the IPR decisions, the PTAB proceedings “may also clarify claim construction positions” and
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`“encourage settlement”—factors that would simplify the case and warrant a stay. Evolutionary
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`Intelligence, LLC v. Apple, Inc., No. C 13-04201-WHA, 2014 WL 93954, at *3 (N.D. Cal. Jan. 9,
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`2014); see also Xylon Licensing, 2022 WL 2078030, at *1-2; Mot. at 8. Indeed, staying this case
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`through only July 2023 (just weeks from now) will avoid potentially unnecessary, inconsistent,
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`and duplicative invalidity contentions and claim construction that will likely require
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`amendment(s).
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`RFCyber cites no authority to support its argument that a stay is proper only if the entire
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`case is resolved. See Opp. at 4. The authority is in fact to the contrary. See e-Watch, Inc. v. ACTi
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`Corp., Inc., No. SA-12-CA-695-FB, 2013 WL 6334372, at *7 (W.D. Tex. Aug. 9, 2013), report
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`and recommendation adopted, 2013 WL 6334304 (W.D. Tex. Aug. 26, 2013) (granting stay
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`notwithstanding that “there is no known IPR petition seeking review of one of the patents-in-suit
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`2
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 6 of 10
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`in this case.”). Nor has RFCyber provided any explanation for how the potential invalidity of two
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`patents in this case, as well as analysis of the patent claims, would not materially impact the scope
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`of the case, particularly the upcoming invalidity contentions and claim constructions. Because the
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`Asserted Patents all belong to one family, statements regarding overlapping or related claim terms
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`by the PTAB are likely to impact other claims remaining in the case. Compare Dkt. 1-1, Ex. A
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`(’218 Patent) at claim 1 with Dkt. 1-3, Ex. C (’787 Patent) at claim 1. Even if the same products
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`are being accused, a reduction in the number of patents and claims will likely limit discovery with
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`respect to at least inventors, conception, prior art, expert witness testimony, and damages.
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`RFCyber similarly fails to cite any support for its arguments that Visa must be a party-in-
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`interest to the pending IPR proceedings to warrant a stay. Opp. at 4. Nor could it; courts in this
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`district have expressly stated that “[i]t is not necessary for [a defendant] to be a party to IPR
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`proceedings for the USPTO’s substantive decisions . . . to have an effect on the patent issues to be
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`litigated in this case.” e-Watch, Inc., 2013 WL 6334372, at *7; see also Bell Semiconductor, LLC
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`v. NXP Semiconductors, N.V., No. 1:20-CV-611-LY, 2022 WL 1447948, at *2 (W.D. Tex. Feb. 7,
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`2022). The sole case RFCyber cites in support of its position is Sonrai Memory Ltd. v. L.G. Elecs.
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`Inc., which merely provides that the scope of estoppel from IPR proceedings is one of several
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`factors the court can consider when deciding a motion to stay. No. 6:21-CV-00168-ADA, 2022
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`WL 2307475, at *3 (W.D. Tex. June 27, 2022) (Albright, J.). This Court never suggested that
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`absent estoppel, the issues in a case are not simplified. See Bell Semiconductor, LLC, 2022 WL
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`1447948, at *2 (finding “a stay pending IPR proceedings will simplify the issues in this case” even
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`when the defendant “can reassert the arguments raised in [] IPR”).
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`RFCyber’s Opposition fails to refute the clear simplification of issues and judicial
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`efficiencies that will result from a stay of merely one month pending a decision on instituted IPR
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`3
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 7 of 10
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`Proceedings on two Asserted Patents. This factor weighs strongly in favor of a stay.
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`B.
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`Plaintiff Will Not Suffer Any Prejudice From a Stay
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`RFCyber does not demonstrate any prejudice that will result from staying this case
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`through the IPR decisions. RFCyber failed to submit any declaration or make any other showing
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`supporting a claim of undue prejudice, nor could it. See Crossroads Sys., Inc. v. Dot Hill Sys.
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`Corp., No. A-13-CA-800-SS, 2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015) (finding no
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`undue prejudice would result from staying action even when Plaintiff submitted affidavit on
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`financial hardship it would suffer because “mere delay in collecting [monetary] damages does
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`not constitute undue prejudice.”).
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`This case is still in the earliest stages. Meanwhile, the PTAB is expected to issue a final
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`written decision in the pending IPRs by July 2023. Opp. at 2. RFCyber notes that Visa’s Token
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`Service launched in 2014 and argues that potential loss of evidence should be a reason to avoid
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`any further delay. But the years of delay are RFCyber’s doing, not Visa’s. See Mot. at 5.
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`RFCyber sat on its claims for six years. Id. If anything, RFCyber’s six-year delay in filing suit
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`makes it clear that it did not believe any extant evidence could be lost during a short stay.
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`Neither of the authorities cited by RFCyber to support its alleged prejudice is apposite.
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`In Sonrai, the district court case was slated to go to trial prior to the PTAB trial. 2022 WL
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`2307475, at *1. Here, trial is more than a year away when a final written decision in the IPRs is
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`expected in a matter of weeks. Sonrai was also at an “advanced stage,” and the court had already
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`“expended significant resources.” Id. at *3. By contrast, no claim construction or discovery has
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`occurred in this case.
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`Kerr Mach. Co. v. Vulcan Indus. Holdings, LLC, is also entirely distinguishable. See
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`Opp. at 5. First, the Kerr case was far more advanced—nearing the close of fact discovery—and
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`the IPR decision was not expected until near the trial date. No. 6-20-CV-00200-ADA, 2021 WL
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`4
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 8 of 10
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`1298932, at *2 (W.D. Tex. Apr. 7, 2021). Second, in Kerr, the parties were competitors. Id.
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`RFCyber is a non-practicing entity. It does not compete with Visa, nor does RFCyber make any
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`products. And nowhere in its Opposition does RFCyber dispute the sufficiency of monetary
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`relief for its claims. Thus, a stay does not pose any risk of undue prejudice. See Crossroads,
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`2015 WL 3773014, at *2; Mot. at 4-6.
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`Finally, in Kerr, a key distinction drawn by the court was that the defendant initiated IPR
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`after suit, “invit[ing] this added complexity by unilaterally seeking parallel litigation in the
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`PTAB.” 2021 WL 1298932, at *2. In the instant case, the IPR petitions were filed nearly six
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`months before RFCyber filed this lawsuit against Visa. It was RFCyber “invit[ing] this added
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`complexity” by filing suit against Visa on the same and related patents as those under review
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`before written decisions were expected. Any perceived complication in the procession of this
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`case is of RFCyber’s own making, not Visa’s. Therefore, this factor also weighs in favor of a
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`stay.
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`C.
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` The Early Stage Of This Case Favors A Stay
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`RFCyber acknowledges that “the case is at a relatively early stage.” Opp. at 5. Yet,
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`RFCyber asserts that a stay is still unwarranted because the only expected milestones before the
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`stay are invalidity contentions and claim construction. Id. at 6. But the validity of asserted
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`patents and construction of the claims therein are exactly the issues the IPR decisions are
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`expected to illuminate. RFCyber provides no reason why the parties should engage in
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`duplicative, inconsistent, or unnecessary efforts now instead of waiting a month to avoid wasting
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`the parties’ limited resources. Like the two preceding factors, this factor weighs in favor of a
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`stay.
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`5
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 9 of 10
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`III. 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 (5) business days
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`of the PTAB’s ultimate resolution of the petitions and, if warranted, allow the parties to seek a
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`further stay.
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`Dated: June 29, 2023
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`Respectfully submitted,
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`/s/ James C. Yoon
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`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
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`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
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`Lucy Yen (pro hac vice)
`Cassie L. Black (pro hac vice)
`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
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`Attorneys for Defendant VISA U.S.A. Inc.
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`Case 6:22-cv-00697-ADA Document 33 Filed 06/29/23 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`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 29, 2023.
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`By: /s/ James C. Yoon
`James C. Yoon
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`.
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