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`T-REX PROPERTY AB,
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`Plaintiff,
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`CONTEXTMEDIA, INC. AND
`CONTEXTMEDIA HEALTH, LLC,
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`Defendants.
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`Judge Joan H. Lefkow
`Magistrate Judge Maria Valdez
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`Civil Action No. 16-4826
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`Document electronically filed.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`DEFENDANTS’ MOTION TO STAY PENDING
`INTER PARTES REVIEW OF THE PATENTS-IN-SUIT
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`Defendants ContextMedia, Inc. and ContextMedia Health, LLC (“ContextMedia”), by
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`and through their attorneys, respectfully move this Court to stay this case pending final written
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`decisions on third party Barco, Inc.’s petitions for inter partes review (“IPR”), IPR2017-01909,
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`IPR2017-01911, and IPR2017-01915, which challenge the validity of every asserted claim the
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`patents-in-suit, i.e., U.S. Patent Nos. RE39,470, 7,382,334, and 6,430,603. ContextMedia further
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`requests that discovery be immediately stayed under Federal Rule of Civil Procedure 26(c) in
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`order to avoid mooting the saving of substantial discovery expenses that would otherwise be
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`unnecessarily incurred.
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`As explained in the accompanying memorandum of law, filed contemporaneously
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`herewith, a stay pending final written decisions in the IPRs is warranted because (1) the petitions
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`specifically address the PTAB-identified deficiencies in BroadSign International, LLC’s prior
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`PTAB petitions on the patents-in-suit, (2) the petitions collectively challenge the validity of
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`every asserted claim in this suit, (3) discovery is in its infancy so a stay would conserve the party
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`and Court resources that may be unnecessary, or altered, in light of the PTAB’s decision, and (4)
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`1
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`Case: 1:16-cv-04826 Document #: 74 Filed: 09/08/17 Page 2 of 4 PageID #:2257
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`Plaintiff is a non-practicing entity that will not be unduly prejudiced or tactically disadvantaged
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`by a stay because discovery has barely begun, the parties are not competitors, and Plaintiff
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`delayed at least eight years in filing suit on two of the three patents-in-suit.
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`WHEREFORE, ContextMedia respectfully requests this Court grant ContextMedia’s
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`Motion and stay this case, as well as immediately stay discovery, pending final written decisions
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`on Barco, Inc.’s petitions for IPR of the patents-in-suit.
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`Dated: September 8, 2017
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`Respectfully submitted,
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` /s/ Katherine E. Ramlose
`Sharon A. Hwang (No. 6217211)
`Eligio C. Pimentel (No. 6230049)
`Robert A. Surrette (No. 6243979)
`Katherine E. Ramlose (No. 6321349)
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison Street, Suite 3400
`Chicago, Illinois 60661
`Telephone: (312) 775-8000
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`Attorneys for Defendants,
`ContextMedia, Inc. and ContextMedia Health, LLC
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`Case: 1:16-cv-04826 Document #: 74 Filed: 09/08/17 Page 3 of 4 PageID #:2258
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`Certification Pursuant to Local Rule 37.2
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`During an telephone conference on September 1, 2017, between Ted Chiacchio (counsel for
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`Plaintiff T-Rex Property AB) and Katherine Ramlose (counsel for Defendants ContextMedia, Inc.
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`and Contextmedia Health, LLC), counsel for Defendants inquired as to whether the Plaintiff would
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`agree to a stay of the case pending resolution of Barco, Inc.’s petitions for inter partes review
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`challenging U.S. Patent Nos. RE39,470, 7,382,334, and 6,430,603. As discussed in Defendants’
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`Memorandum in Support of Their Motion to Stay Pending Inter Partes Review of the Patents-in-
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`Suit, Ted Chiacchio (counsel for Plaintiff) wrote to counsel for Defendants on September 6, 2017, and
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`September 7, 2017, indicating that Plaintiff would not agree to a stay of the case pending resolution of
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`the IPR petitions unless Defendants agreed to be bound by a higher level of estoppel than was applied
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`during the previous stay and is normally applied to defendants not involved with the IPRs. See
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`Declaration of Katherine E. Ramlose, Exs. 1, 2. Despite Defendants statement that it would agree to be
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`bound by the scope of estoppel applied during the previous stay, and request that Plaintiff propose an
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`alternative scope of estoppel appropriate for defendants not involved in the IPRs, Plaintiff would not
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`change its position. See id. at Exs. 9, 2.
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`/s/ Katherine E. Ramlose
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`Case: 1:16-cv-04826 Document #: 74 Filed: 09/08/17 Page 4 of 4 PageID #:2259
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 8, 2017 a copy of the foregoing was served on counsel
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`of record by electronic means pursuant to the court’s Electronic Case Filing (ECF) system:
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`/s/ Katherine E. Ramlose
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`4
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