Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 1 of 21
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`
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`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`Jacob A. Schroeder (SBN 264717)
`jacob.schroeder@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`Gerald F. Ivey (pro hac vice)
`Smith R. Brittingham IV (pro hac vice)
`Elizabeth A. Niemeyer (pro hac vice)
`John M. Williamson (pro hac vice)
`Rajeev Gupta (pro hac vice)
`Aidan C. Skoyles (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`(202) 408-4000
`Facsimile:
`(202) 408-4400
`
`Stephen E. Kabakoff (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3500 SunTrust Plaza
`303 Peachtree Street, N.E.
`Atlanta, GA 30308-3263
`Telephone:
`(404) 653- 6400
`Facsimile:
`(404) 653-6444
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
`
`
`OPENTV, INC. NAGRAVISION S.A., and
`NAGRA FRANCE S.A.S.
`
`
`Plaintiffs,
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
` CASE NO. 5:15-cv-02008-EJD (NMC)
`
`PLAINTIFFS’ OPPOSITION TO
`DEFENDANT APPLE INC.’S MOTION
`TO STAY PENDING COMPLETION OF
`USPTO PROCEEDINGS
`
`Date: September 15, 2016
`Time: 9:00 am
`Judge: Hon. Edward J. Davila
`Courtroom: 4, 5th Floor
`
`v.
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`
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`APPLE INC.,
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`Defendant.
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 2 of 21
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`
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`I.
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`II.
`
`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
`
`BACKGROUND .................................................................................................................2
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`III.
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`THE FACTS IN THIS CASE WEIGH AGAINST A STAY ..............................................4
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`A.
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`B.
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`Factor 1 Weighs Against a Stay: The Case Has Substantially Progressed ..............5
`
`Factor 2 Weighs Against a Stay: A Stay Would Not Necessarily Simplify the
`Issues ........................................................................................................................7
`
`1.
`
`2.
`
`3.
`
`4.
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`Apple’s introduction of new infringing products.........................................7
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`None of Apple’s petitions has been granted ................................................7
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`Unlikely possibility that PTAB proceedings will be instituted and will
`invalidate each challenged claim or otherwise render the case moot ..........8
`
`Unlikely possibility that any issues will be streamlined or result in
`amended claims ............................................................................................9
`
`C.
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`Factor 3 Weighs Against a Stay: A Stay Will Cause OpenTV Undue Prejudice
`and Tactical Disadvantage .....................................................................................11
`
`1.
`
`2.
`
`3.
`
`Apple’s Undue Delay in Seeking Its IPRs and CBM (Sub-Factor 1) ........11
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`The IPR and CBM Proceedings Are Not Instituted (Sub-Factor 3) ..........12
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`Apple’s Burgeoning Television Business Relative to OpenTV
`(Sub-Factor 4) ............................................................................................13
`
`D.
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`The Court Should at Least Wait to See if Apple’s Petitions Are Instituted. .........14
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`IV.
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`IF THE COURT STAYS THIS CASE PENDING THE RESOLUTION OF
`APPLE’S PTAB PETITIONS, THIS COURT SHOULD GRANT OPENTV’S
`MOTION FOR RULE 54 CERTIFICATION ...................................................................14
`
`V.
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`CONCLUSION ..................................................................................................................16
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 3 of 21
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Adaptix, Inc. v. HTC Corp.,
`No. 5:14-cv-02359-PSG, slip op. (N.D. Cal. Aug. 5, 2015) ........................................................5, 6
`
`Affinity Labs of Tex. v. Apple Inc.,
`No. 09-04436 CW, 2010 U.S. Dist. LEXIS 50974, (Apr. 29, 2010) ...............................................5
`
`Affinity Labs of Texas, LLC v. Nike, Inc.,
`No. C 10-5543 CW, 2011 WL 1833122 (N.D. Cal. May 13, 2011) ..............................................12
`
`Alice Corp. PTY. Ltd., v. CLS Bank Int’l et al.,
`134 S.Ct. 2347 (2014) ...................................................................................................................15
`
`Aylus Networks, Inc. v. Apple Inc.,
`No. C-13-4700 EMC, 2014 WL 5809053 (N.D. Cal. Nov. 6, 2014)...............................................4
`
`CANVS Corp. v. United States,
`118 Fed. Cl. 587 (2014) ...................................................................................................................8
`
`Cypress Semiconductor Corp. v. GSI Tech., Inc.,
`2014 U.S. Dist. LEXIS 142858 (N.D. Cal. Oct. 7, 2014) ..............................................................11
`
`Dell Inc. v. Disposition Services, LLC,
`CBM2013-00040, Paper 9 (P.T.A.B. Feb. 12, 2014) ...................................................................10
`
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`No. 14-cv-05330-HSG, 2015 WL 1967878 (N.D. Cal. May 1, 2015) ............................................6
`
`Enfish LLC v. Microsoft Corp.,
`No. 2015–1244, 2016 WL 2756255 (Fed. Cir. May 12, 2016) .....................................................15
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988)........................................................................................................4
`
`Kilopass Tech., Inc. v. Sidense Corp.,
`2011 U.S. Dist. LEXIS 157267 (N.D. Cal. Feb. 8, 2011) ...............................................................9
`
`Loyalty Conversion Sys. Corp. v. American Airlines, Inc.,
`No. 2:13-cv-655, 2014 WL 3736514 (E.D. Tex. July 29, 2014) .....................................................8
`
`Network Appliance Inc. v. Sun Microsystems Inc.,
`No. C-07-06053 EDL, 2008 WL 2168917 (N.D. Cal. May 23, 2008) ............................................9
`
`PersonalWeb Techs., LLC v. Facebook, Inc.,
`Nos. 5:13-cv-01356-EJD, 01358-EJD, 01359-EJD, 2014 WL 116340 (N.D. Cal.
`Jan. 13, 2014) ...............................................................................................................................6, 7
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 4 of 21
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`Pi-Net Int’l, Inc. v. Focus Bus. Bank,
`No. C 12-4958 PSG, 2013 WL 4475940 (N.D. Cal. Aug. 16, 2013) ..............................................4
`
`Redfin Corp. v. CoreLogic Solutions, LLC,
`CBM2014-00027, Paper 14 (P.T.A.B. April 25, 2014) .................................................................10
`
`Rensselaer Polytechnic Institute v. Apple Inc.,
`No. 1:13-cv-0633 (DEP), 2014 WL 201965 (N.D.N.Y. Jan. 15, 2014) ..................................10, 12
`
`Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC,
`No. C-14-1575 EMC, 2014 WL 3107447 (N.D. Cal. Jul. 3, 2014) .................................................4
`
`Roy-G-Biv Corp. v. Fanuc Ltd.,
`No. 2:07-CV-418 (DF), 2009 WL 1080854 (E.D. Tex. Apr. 14, 2009) ..........................................7
`
`TPK Touch Solutions, Inc. v. Wintek Electro-Optics Corp,
`No. 13-cv-02218-JST, 2013 WL 5289015 (N.D. Cal. Sept. 18, 2013) .........................................13
`
`TPK Touch Solutions, Inc. v. Wintek Electro-Optics Corp.,
`No. 13-cv-02218-JST, 2013 WL 6021324 (N.D. Cal. Nov. 13, 2013)......................................8, 12
`
`Verinata Health, Inc. v. Ariosa Diagnostics, Inc.,
`No. C 12-05501 SI, 2014 WL 121640 (N.D. Cal. Jan. 13, 2014)..................................4, 5, 6, 9, 13
`
`Statutes
`
`28 U.S.C. § 1659(a) ...............................................................................................................................4
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`35 U.S.C. § 101 ............................................................................................................................ passim
`
`35 U.S.C. § 311(b) ...............................................................................................................................10
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`35 U.S.C. § 315(e)(2) ...........................................................................................................................10
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`A.I.A. § 18 ...........................................................................................................................................10
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 5 of 21
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`I.
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`INTRODUCTION
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`This case should not be stayed pending completion of inter partes review (“IPR”) and
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`covered business method review (“CBM”) of the asserted OpenTV patents. Rather than promptly
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`filing IPR and CBM petitions with the U.S. Patent and Trademark Office (“PTO”) and seeking a stay
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`based on promptly-filed petitions, Apple waited until just before the statutory deadline to file its
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`petitions. Apple now seeks to continue its unwarranted, knowing infringement for another eighteen
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`months while the PTO’s Patent Trial and Appeal Board (“PTAB”) considers Apple’s petitions. If
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`this Court is inclined to grant Apple’s motion, however, this Court should also grant OpenTV’s
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`motion for Rule 54(b) certification (ECF No. 75), allowing review of all the patents at issue to
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`proceed in parallel.
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`Apple attempts to justify its extensive delay in seeking a stay by claiming it filed its petitions
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`within the one-year statutory deadline, suggesting that the existence of a deadline excuses its
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`decision to wait more than eleven months before filing its petitions. Complying with the statutory
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`deadline, however, does not equate with diligence; rather, it merely avoids the statutory bar.
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`Moreover, OpenTV would suffer significant prejudice if the Court grants Apple’s motion. The
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`parties and the Court have already expended substantial resources, and none of the requested IPRs or
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`CBM has been instituted. In the interim, Apple’s infringement continues.
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`Apple’s stall tactic of waiting until the statutory deadline to file an IPR or CBM—only to
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`seek a stay of a year-and-a-half of the litigation—severely prejudices OpenTV’s ability to enforce its
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`valid intellectual property rights. Apple argues this case should be stayed pending completion of not-
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`yet-instituted IPR and CBM proceedings because: (1) the case is in its early stages; (2) a stay will
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`simplify issues for trial; and (3) OpenTV will not suffer any tactical disadvantage or undue
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`prejudice. Apple is wrong on each count.
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`First, this case is not in its early stages. During the past year, the parties exchanged
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`infringement and invalidity contentions, served over 200 requests for production; produced over
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`100,000 pages of documents; inspected source code; briefed, argued, and received the Court’s order
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`invalidating two patents; and briefed and argued claim construction before the Court. Although a
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 6 of 21
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`trial date has not been set, it is reasonable to expect the trial would conclude well before the PTAB
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`renders final decisions on the IPRs or CBM, assuming any of the petitions is even granted.
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`Second, Apple’s assertion that a stay would simplify the issues for trial is speculative.
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`Apple’s arguments rest on the statistical outcomes of IPR and CBM requests and proceedings, rather
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`than the merits of its petitions. Statistics, however, are by their nature retrospective and not
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`predictive. The statistical win rate of patent holders predicts little about the outcome of a particular
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`case. None of Apple’s petitions has been granted, and a stay would be inapposite for claims not
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`subject to IPR or CBM.
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`Third, OpenTV will suffer tactical disadvantage and undue prejudice if this case is stayed,
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`not only because of the institutional delay of any potential PTAB proceeding, but also due to
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`Apple’s nearly one-year delay in filing its petitions. Further delay of this case at this late stage would
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`serve to prejudice OpenTV. In short, the Court should deny Apple’s motion.
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`If, however, the Court were inclined to grant Apple’s motion—allowing the PTAB eighteen
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`months to consider the patents at issue—the Court should also grant OpenTV’s motion for Rule
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`54(b) certification. ECF No. 75. Granting OpenTV’s Rule 54(b) motion would allow the Federal
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`Circuit to hear and decide OpenTV’s appeal from this Court’s order finding two of OpenTV’s
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`patents invalid under 35 U.S.C. § 101 (ECF No. 72) in parallel with the PTAB proceedings. The
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`Federal Circuit would likely decide the appeal before the PTAB issues a final decision on the IPRs
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`and CBM (assuming the PTAB grants any of Apple’s petitions). Under that scenario, when the
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`PTAB and Federal Circuit finish their respective considerations of validity, this Court will have the
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`benefit of the Federal Circuit’s review when the case returns in November 2017.
`II.
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`BACKGROUND
`
`On May 5, 2016, OpenTV filed the instant case against Apple, alleging the infringement of
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`five patents, including U.S. Patent Nos. 7,725,740 (“the ’740 patent”), 7,055,169 (“the ’169 patent”),
`and 6,233,736 (“the ’736 patent”). ECF No. 1.1 Apple filed a motion to dismiss two patents (U.S.
`
`
`1 OpenTV also sued Apple for patent infringement on April 9, 2014, alleging infringement of
`five U.S. Patents. Case No. 3:14-cv-01622-HSG (KAW) (Apple I), ECF No. 1. About a year into
`(continued…)
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 7 of 21
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`Patent Nos. 7,644,429 (“the ’429 patent”) and U.S. Patent No. 6,148,081 (“the ’081 patent”)) as
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`invalid under 35 U.S.C. § 101. ECF No. 33. After briefing and oral argument, the Court issued its
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`order on Apple’s motion to dismiss in January 2016, holding those patents invalid as a matter of law.
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`ECF No. 72. OpenTV filed a motion for entry of partial final judgment and Rule 54(b) certification
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`of the Court’s Order with respect to the ’429 and ’081 patents (ECF No. 75), which is set for
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`argument on August 18, 2016 (ECF No. 78). Schroeder Decl. at ¶ 8.
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`Meanwhile, the parties have issued and responded to over 200 requests for production
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`(Schroeder Decl. at ¶ 10) and briefed a motion regarding OpenTV’s compliance with the Patent
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`Local Rules (ECF Nos. 85, 91, 93). The parties have exchanged infringement contentions and
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`validity contentions; finished claim construction briefing; and, on May 12, presented a technology
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`tutorial to the Court and the Court conducted a claim construction hearing. ECF No. 58, 99;
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`Schroeder Decl. at ¶ 10.
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`Nearly one year after the filing of this case, Apple filed IPR petitions against the ’736 and
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`’740 patents and a CBM petition against the ’169 patent. Schroeder Decl. at ¶ 11. Apple then filed
`this motion for stay. ECF No. 92.2
`Significant deadlines in this case are only a matter of months away. For example, this case is
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`scheduled for a Trial Setting Conference in July, exchange of expert reports in August and
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`September, and close of expert discovery in October. ECF No. 58. Each of these deadlines is set to
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`occur before the November 2 deadline for the PTAB to decide whether or not to institute review of
`the patents-in-suit. ECF No. 92 at 9.3 This deadline for the PTAB’s decision comes just one week
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`
`(…continued)
`that case, Apple filed IPRs on four of OpenTV’s patents and eventually moved to stay that litigation.
`Apple I, ECF Nos. 194, 207, 209; Schroeder Decl. at ¶ 7. The Court granted Apple’s motion to stay
`(Apple I, ECF No. 217, 222), and the IPRs are on schedule to be argued this June (Apple I, ECF No.
`223; Schroeder Decl. at ¶ 7). OpenTV anticipates that most, if not all, claims from each patent will
`survive Apple’s IPRs, and expects the case OpenTV filed in April 2014 will resume by the end of
`2016. Schroeder Decl. at ¶ 7.
`2 After filing its stay motion (ECF No. 92), Apple filed an IPR petition against the ’169
`patent. Schroeder Decl. at ¶ 11.
`3 All citations to pages of ECF documents refer to the ECF page number and not necessarily
`to the page number printed on the document.
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`3
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 8 of 21
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`before the dispositive motion deadline in this case. ECF No. 58. Although the Court recently
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`indicated it may reset these dates, OpenTV continues to work diligently to prepare for eventual trial.
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`III. THE FACTS IN THIS CASE WEIGH AGAINST A STAY
`Apple is not entitled to a stay pending completion of IPR or CBM proceedings. The decision
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`to grant or deny a stay is entirely within the Court’s discretion. See Ethicon, Inc. v. Quigg, 849 F.2d
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`1422, 1426-27 (Fed. Cir. 1988). “[A] ‘court is under no obligation to delay its own proceedings’
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`where parallel litigation is pending before the PTAB.” Aylus Networks, Inc. v. Apple Inc., No. C-13-
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`4700 EMC, 2014 WL 5809053, at *1 (N.D. Cal. Nov. 6, 2014) (quoting Robert Bosch Healthcare
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`Sys., Inc. v. Cardiocom, LLC, No. C-14-1575 EMC, 2014 WL 3107447, at *2 (N.D. Cal. Jul. 3,
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`2014)). “This is especially true when the Patent Office has yet to decide whether to institute IPR
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`proceedings.” Aylus, 2014 WL 5809053, at *1 (citations omitted). Rather, the party seeking the stay
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`has the burden of showing the court that the stay is appropriate. Pi-Net Int’l, Inc. v. Focus Bus. Bank,
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`No. C 12-4958 PSG, 2013 WL 4475940, at *3 (N.D. Cal. Aug. 16, 2013). If Congress had intended
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`stays pending IPR proceedings to be automatic, it would have included such a provision in the
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`statute. Cf. 28 U.S.C. § 1659(a) (requiring stays of certain district-court actions pending disposition
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`of related ITC proceedings).
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`Courts in the Northern District consider three factors when determining whether to grant a
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`stay pending IPR: “(1) whether discovery is complete and whether a trial date has been set; (2)
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`whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would
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`unduly prejudice or present a clear tactical disadvantage to the non-moving party.” Verinata Health,
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`Inc. v. Ariosa Diagnostics, Inc., No. C 12-05501 SI, 2014 WL 121640, at *1. (N.D. Cal. Jan. 13,
`2014) (citation omitted); Aylus, 2014 WL 5809053, at *1 (citation omitted).4 As explained below,
`each of these factors weighs against granting a stay in this case.
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`4 The Northern District considers a fourth factor when determining whether to grant a stay
`pending CBM, but Apple has now filed an IPR petition as to each of the asserted patents. OpenTV
`does not necessarily agree, however, with Apple’s characterization of the differences between the
`tests for assessing whether to stay pending an IPR or a CBM.
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`4
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`

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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 9 of 21
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`Factor 1 Weighs Against a Stay: The Case Has Substantially Progressed
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`A.
`Apple contends the stage of litigation weighs in favor of a stay because discovery is not
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`complete and no trial date has been set. ECF No. 92 at 11. Yet, these are only two of several factors
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`courts analyze when determining whether the stage of litigation weighs in favor of a stay. Courts
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`also look at, for example, the exchange of initial disclosures, exchange of contentions, the state of
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`document production, and completion of claim construction. See, e.g., Verinata Health, 2014 WL
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`121640, at *2 (finding exchange of initial disclosures, infringement and invalidity contentions, and
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`document productions suggested the case was not in an early stage); Adaptix, Inc. v. HTC Corp., No.
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`5:14-cv-02359-PSG, slip op. at 5 (N.D. Cal. Aug. 5, 2015) (finding completion of claim construction
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`briefing and issuance of a claim construction order counsels against a stay). And the close of fact
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`discovery and setting of a trial date are not dispositive for granting a stay. See Affinity Labs of Tex. v.
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`Apple Inc., No. 09-04436 CW, 2010 U.S. Dist. LEXIS 50974, at *4, *6-7 (Apr. 29, 2010) (denying a
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`motion for stay where “[n]o discovery has taken place, no trial date has been set and the parties have
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`not even appeared in Court for their initial case management conference”).
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`This case has progressed beyond an “early” stage. Although the parties have not engaged in
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`depositions or expert discovery, the Court and the parties have already invested significant time and
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`resources in this case. For example, the parties have exchanged initial disclosures, exchanged Patent
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`Local Rule disclosures, served detailed infringement and invalidity contentions, and exchanged
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`extensive discovery requests. Significantly in this case, the parties agreed that nearly all discovery
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`exchanged in Apple I (currently stayed) may be used in this case, meaning over 100,000 pages of
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`documents have also already been produced in this case. Schroeder Decl. at ¶ 10. Further, “[w]hile
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`the range of what qualifies as ‘early stage’ is relative, there is a general consensus that where ‘the
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`parties have fully briefed the issue of claim construction, attended a Markman hearing, and received
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`a claim construction order,’ discovery is well underway such to counsel against granting a stay.”
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`Adaptix, slip op. at 5. Here, the parties completed claim construction briefing and presented a tutorial
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`and conducted a claim construction hearing.
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`In Verinata, the court found the case was not in an early stage where the parties had
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`exchanged initial disclosures, infringement and invalidity contentions, and some document
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`5
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`

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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 10 of 21
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`productions, and the court had construed the disputed terms of the patents-in-suit and set a trial date.
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`2014 WL 121640, at *2. The court discounted the movant’s argument that there was “much more
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`work ahead of the parties, including the completion of fact and expert discovery, the filing of
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`dispositive motions, and trial,” finding the first factor weighed against a stay. Id. Similar to Verinata,
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`the parties here have exchanged initial disclosures, infringement and invalidity contentions, and
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`document productions, and the Court prepared for and presided over a 5 hour tutorial and claim
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`construction hearing. Schroeder Decl. at ¶ 10. The Court also may construe the disputed terms of the
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`patents-in-suit before November, when the PTAB decides whether to institute any IPR or CBM
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`petition. Although a trial date has not yet been set, the schedule is proceeding apace and significant
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`progress is expected before the PTAB decides whether to institute any of Apple’s petitions. Id. at ¶
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`13.
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`Apple asserts that DSS Technology Management and PersonalWeb Technologies support its
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`contention that the stage of this case favors a stay, but Apple fails to acknowledge key differences
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`between the posture of those cases and this action. See ECF No. 92 at 12. As Apple points out, in
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`DSS Technology Management, the Court found the stage of litigation favored a stay even though the
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`parties had engaged in some discovery, including a deposition. DSS Tech. Mgmt., Inc. v. Apple Inc.,
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`No. 14-cv-05330-HSG, 2015 WL 1967878, at *2 (N.D. Cal. May 1, 2015). In that case, however, no
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`substantive motions had been filed and the court had not yet held a technology tutorial or Markman
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`hearing. Id. Neither is true in this case. Apple’s dispositive motion to dismiss OpenTV’s ’429 and
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`’081 patents was filed, argued, and decided months ago. See, e.g., ECF No. 72. Moreover, the Court
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`has already received claim construction briefing, prepared for and presided over an extensive
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`Markman hearing, and is likely to issue its claim construction order before it decides this motion—
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`facts that courts in the Northern District have found counsel against a stay. See Adaptix, slip op. at 5.
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`While the court in PersonalWeb Technologies granted a motion to stay even though a claim
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`construction order had issued, the Court noted that “somewhat novel circumstances” surrounded that
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`case—the initial stages of the litigation “developed in a different district, under a different court’s
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`case management method and timetable.” PersonalWeb Techs., LLC v. Facebook, Inc., Nos. 5:13-
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`cv-01356-EJD, 01358-EJD, 01359-EJD, 2014 WL 116340, at *3 (N.D. Cal. Jan. 13, 2014).
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`6
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`

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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 11 of 21
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`Moreover, the court in that case noted that the preliminary pretrial conference—where the court
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`would set the trial date—was still six months away. Id. at *4. Here, in contrast, the Court has
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`currently scheduled a trial setting conference for July, nearly four months before the PTAB will
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`decide to institute any of Apple’s petitions. ECF No. 58 at 2.
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`In sum, this case is long past its early stages. The first factor weighs against a stay.
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`B.
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`Factor 2 Weighs Against a Stay: A Stay Would Not Necessarily Simplify the
`Issues
`1.
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`Apple’s introduction of new infringing products
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`Apple argues that a stay should be granted, now, absent institution of any IPR or CBM,
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`because an IPR has the potential to simplify the case. See ECF No. 92 at 12-15. Quite the opposite,
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`because Apple frequently introduces new products and software releases, a stay would likely
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`increase the number of issues in this case, as the case would need to be expanded at a later date to
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`capture all new products and software that fall within the scope of the asserted patent claims but
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`were introduced during the stay. OpenTV would need to review and analyze all such new products
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`and software, which could involve significant amounts of new source code and documentation.
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`None of Apple’s petitions has been granted
`2.
`Further, none of Apple’s IPR or CBM petitions has been granted. Apple cites generalized
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`statistics alleging “a high probability that the PTAB will institute reviews for all or a substantial
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`number of the challenged claims” (ECF No. 92 at 13), but fails to address the substance of Apple’s
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`petitions in this particular litigation. See Roy-G-Biv Corp. v. Fanuc Ltd., No. 2:07-CV-418 (DF),
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`2009 WL 1080854, at *2 (E.D. Tex. Apr. 14, 2009) (“To convince this Court that a stay will actually
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`simplify a case, the requesting party must do more than merely proffer oft-cited reexamination
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`statistics and generic judicial efficiency arguments.”). Further Apple’s argument that its petition with
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`respect to the ’736 patent is likely to be instituted because Netflix’s petition against that patent was
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`instituted is flawed. In response to Netflix’s petition, OpenTV filed a detailed opposition with the
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`PTAB describing how the petition failed to address all the elements of the claims and failed to
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`provide any persuasive reason why the PTAB should cancel the challenged claims. Schroeder Decl.
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`at ¶ 14. Two months later, Netflix withdrew its petition. Id. There is no reason to assume Apple’s
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`7
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 12 of 21
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`petition with respect to the ’736 patent will be granted merely because Netflix’s petition was
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`granted.
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`3.
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`Unlikely possibility that PTAB proceedings will be instituted and
`will invalidate each challenged claim or otherwise render the case
`moot
`The generalized PTAB statistics Apple presents in its motion regarding the likelihood of IPR
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`or CBM institution do not guarantee that the PTAB will institute each of the specific petitions
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`relevant to this motion, or that the PTAB will institute review on every ground or claim Apple
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`requested in its petitions. The PTAB statistics Apple submitted indicate that for 22% of all petitions
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`all claims were found unpatentable. Apple misleadingly indicates that for 72% of all IPR trials all
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`claims were found unpatentable (ECF No. 92 at 14), but Apple’s exhibit indicates that 44% of all
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`claims for which a trial was instituted were found unpatentable. ECF No. 92-2 at 11.
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`Apple also argues “a stay is warranted because the USPTO proceedings have the potential to
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`make the entire case moot.” ECF No. 92 at 14. Any potential streamlining of the issues here,
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`however, is speculative considering that the PTAB has not ruled—and will not rule for another six
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`months—on any of Apple’s petitions. See CANVS Corp. v. United States, 118 Fed. Cl. 587, 594
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`(2014) (“The court will not base its stay decision on speculation as to the likelihood that the PTO
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`will accept review or ultimately cancel one or more claims.”); TPK Touch Solutions, Inc. v. Wintek
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`Electro-Optics Corp., No. 13-cv-02218-JST, 2013 WL 6021324, at *4 (N.D. Cal. Nov. 13, 2013)
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`(“Ultimately, the PTO may not institute IPR proceedings. Even if it does, the Court and the parties
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`cannot know now whether the claims subject to IPR will be the same claims that Plaintiff asserts
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`here.”). As Federal Circuit Judge Bryson has explained, sitting by designation in the Eastern District
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`of Texas, “a stay could simplify the issues in this case and streamline the trial—or even obviate the
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`need for a trial—but only if the PTAB grants the petition for CBM review.” Loyalty Conversion Sys.
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`Corp. v. American Airlines, Inc., No. 2:13-cv-655, 2014 WL 3736514, at *2 (E.D. Tex. July 29,
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`2014) (emphasis added).
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`Even if the PTAB grants each of Apple’s IPR and CBM petitions, the IPRs and CBM would
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`render the entire case moot only if the PTAB cancels each asserted claim from each asserted patent.
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`And courts in this district have acknowledged that “complaints involving multiple patents”—as in
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`8
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`PLAINTIFFS’ OPPOSITION TO APPLE’S MOTION TO STAY
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`

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`Case 5:15-cv-02008-EJD Document 101 Filed 05/17/16 Page 13 of 21
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`this case—“are less likely to be resolved by a PTO decision.” Verinata Health, 2014 WL 121640, at
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`*3 (quoting Kilopass Tech., Inc. v. Sidense Cor