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`Christopher Kao (SBN 237716)
` christopher.kao@pillsburylaw.com
`David J. Tsai (SBN 244479)
` david.tsai@pillsburylaw.com
`Brock S. Weber (SBN 261383)
` brock.weber@pillsburylaw.com
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`Four Embarcadero Center, 22nd Floor
`San Francisco, CA 94111
`Tel.: 415.983.1000
`Fax: 415.983.1200
`
`Attorneys for Defendants
`LUXSHARE PRECISION INDUSTRY CO., LTD.
`AND LUXSHARE-ICT, INC.
`
`
`Thomas J. Gray (SBN 191411)
` tgray@tklg-llp.com
`Hsiang “James” H. Lin (SBN 241472)
` jlin@tklg-llp.com
`Michael C. Ting (SBN 247610)
` mting@tklg-llp.com
`TECHKNOWLEDGE LAW GROUP LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Tel: (650) 517-5200
`Fax: (650) 226-3133
`
`Attorneys for Defendants
`ACER INC. AND ACER AMERICA
`CORPORATION
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`BING XU PRECISION CO. LTD.,
`Plaintiff,
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`v.
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`ACER INCORPORATED AND ACER
`AMERICA CORPORATION, LUXSHARE
`PRECISION INDUSTRY CO., LTD, AND
`LUXSHARE-ICT, INC.,
`Defendants.
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`Case No. 5:16-CV-02491-EJD
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`DEFENDANTS’ NOTICE OF MOTION
`AND MOTION TO CONTINUE THE
`STAY PENDING APPEAL
`
`
`
`No Hearing Set (Dkt. No. 72)
`Date:
`No Hearing Set (Dkt. No. 72)
`Time:
`Courtroom: 4, 5th Floor
`Judge:
`Hon. Edward J. Davila
`
`Defendants’ Motion to Continue the Stay
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`Case 5:16-cv-02491-EJD Document 73 Filed 02/22/19 Page 2 of 14
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`NOTICE OF MOTION
`PLEASE TAKE NOTICE that Defendants Acer Inc. and Acer America Corporation
`(together, “Acer”), and Defendants Luxshare Precision Industry Co., Ltd. and Luxshare-ICT, Inc.
`(together, “Luxshare”), hereby move to continue the stay of this action pending resolution of the
`appeals of the inter partes review (“IPR”) proceedings for the three patents-in-suit. The Court
`authorized this Motion in its “Order Re Joint Status Report” on February 8, 2019, in which the
`Court ruled that “Plaintiff shall respond on or before March 8, 2019,” and “[t]hereafter, the matter
`will be taken under submission for decision [and] [n]o hearing will be set on this motion.” (Dkt.
`No. 72.)
`RELIEF REQUESTED: Defendants seek an Order continuing the stay of this case pending
`resolution of the appeals of the U.S. Patent and Trademark Office’s Final Written Decisions in the
`IPR proceedings for each of the three patents-in-suit.
`The Motion is based upon this Notice of Motion, the following Memorandum of Points and
`Authorities, the Declaration of Christopher Kao filed herewith and exhibits thereto, and the
`pleadings and papers filed herein.
`
`Dated: February 22, 2019
`
`
`Respectfully submitted,
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`
`/s/ Christopher Kao
`Christopher Kao (SBN 237716)
`
`Attorneys for Defendants
`Luxshare Precision Industry Co., Ltd. and
`Luxshare-ICT, Inc.
`
`
`
`TECHKNOWLEDGE LAW GROUP LLP
`
`/s/ Thomas J. Gray
`Thomas J. Gray (SBN 191411)
`
`
`Attorneys for Defendants Acer Inc. and
`Acer America Corporation
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`Defendants’ Motion to Continue the Stay
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`Case 5:16-cv-02491-EJD Document 73 Filed 02/22/19 Page 3 of 14
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................................... 1 
`BACKGROUND ................................................................................................................. 2 
`THE STAY SHOULD CONTINUE PENDING APPEAL. ................................................ 3 
`Resuming Litigation Now Would Complicate The Issues For Trial, While
`A. 
`Continuing The Stay Will Simplify The Case Or Dispose Of It.............................. 4 
`The Stage of This Case Favors a Stay. ..................................................................... 6 
`B. 
`A Stay Will Not Unduly Prejudice Plaintiff. ........................................................... 7 
`C. 
`CONCLUSION .................................................................................................................... 8 
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`
`
`I. 
`II. 
`III. 
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`IV. 
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`Defendants’ Motion to Continue the Stay
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Cases
`
`Advanced Micro Devices, Inc. v. LG Elecs., Inc., et al.,
`Case No. 14-cv-01012-SI, 2015 WL 545534 (N.D. Cal. Feb. 9, 2015) ........................................ 6
`Affinity Labs of Tex. LLC v. Samsung Elecs. Co., Ltd.,
`No. 14-CV-2717 YGR, 2014 WL 3845684 (N.D. Cal. Aug. 1, 2014) ........................................... 6
`AT&T Intellectual Prop. I, et al. v. Tivo, Inc.,
`774 F. Supp. 2d 1049 (N.D. Cal. 2011) ........................................................................................ 6-7
`CardSoft, LLC v. VeriFone, Inc.,
`807 F.3d 1346 (Fed. Cir. 2015) ........................................................................................................ 4
`Convergence Techs. v. Microloops Corp.,
`No. 10-cv-02051-EJD, 2012 WL 1232187 (N.D. Cal. April 12, 2012)........................................... 7
`Cypress Semiconductor Corp. v. LG Elecs., Inc.,
`Case No. C 13-4034 SBA, 2014 WL 5477795 (N.D. Cal. Oct. 29, 2014) ...................................... 6
`Evolutionary Intelligence LLC v. Yelp Inc.,
`2013 WL 6672451 (N.D. Cal. Dec. 18, 2013) ................................................................................. 8
`Evolutionary Intelligence, LLC v. Facebook, Inc.,
`No. 13–cv–04202–SI, 2014 WL 261837 (N.D. Cal. Jan. 23, 2014) ................................................ 4
`In re Cygnus Telecomms. Tech., LLC, Patent Litig.,
`385 F. Supp. 2d 1022 (N.D. Cal. 2005) ........................................................................................... 4
`In re: Ameranth Pat. Lit. Cases,
`No. 11cv1810 DMS (WVG), 2015 WL 12868116 (S.D. Cal. Jun. 4, 2015) ................................... 5
`Lam Research Corp. v. Flamm,
`No. 15-CV-01277-BLF, 2016 WL 4180412 (N.D. Cal. Aug. 8, 2016) ........................................... 4
`Los Angeles Biomed. Research Institute at Harbor-UCLA Med. Ctr. v. Eli Lilly and Co.,
`No. LA CV13-08567 JAK (JCGx), 2015 WL 10635643 (C.D. Cal. Dec. 1, 2015) ....................... 5
`Microsoft Corp. v. Tivo Inc.,
`No. 10–cv–240–LHK, 2011 WL 1748428 (N.D. Cal. May 6, 2011) .............................................. 5
`PersonalWeb Techs., LLC v. Apple Inc.,
`69 F. Supp. 3d 1022 (N.D. Cal. 2014) ......................................................................................... 4, 7
`PersonalWeb Techs., LLC v. Facebook, Inc.,
`Case Nos. 5:13-CV-01356-EJD, 5:13-CV-01358-EJD, 53-CV-01359-EJD, 2014 WL 116340
`(N.D. Cal. Jan. 13. 2014) ............................................................................................................. 6, 7
`Pragmatus AV, LLC v. Facebook Inc.,
`No. 11-cv-02168-EJD, 2011 WL 4802958 (N.D. Cal. Oct. 11, 2011) ........................................ 5, 7
`Realtime Data LLC v. Silver Peak Sys., Inc.,
`No. 17-CV-02373-PJH, 2018 WL 3744223 (N.D. Cal. Aug. 7, 2018)............................................ 5
`
`Defendants’ Motion to Continue the Stay
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`Safe Storage LLC v. Dell Inc.,
`No. 12-1624-GMS, 2016 U.S. Dist. LEXIS 181116 (D. Del. Mar. 11, 2016) ................................ 5
`Semiconductor Energy Lab. Co. v. Chimei Innolux Corp.,
`No. SACV 12-21-JST (JPRx), 2012 WL 7170593 (C.D. Cal. Dec. 19, 2012) ............................. 7-8
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014) .................................................................................................... 5, 7
`
`Statutes and Codes
`35 U.S.C. § 142 .................................................................................................................................... 3
`Rules and Regulations
`37 C.F.R. § 90.3(a)(1) .......................................................................................................................... 3
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`MEMORANDUM OF POINTS AND AUTHORITIES
`Defendants respectfully submit this memorandum in support of their Motion to continue the
`stay of this action pending resolution of the appeals of the inter partes review (“IPR”) proceedings
`for the three patents-in-suit.
`I.
`INTRODUCTION
`By stipulation between the parties, this matter was stayed pending IPR of the three patents-
`in-suit: U.S. Patent Nos. 8,512,071 (“the ’071 Patent”), 8,740,631 (“the ’631 Patent”), 8,758,044
`(“the ’044 Patent”) (collectively, “the patents-in-suit”). On January 10 and 11, 2019, the Patent
`Trial and Appeal Board (“PTAB”) issued Final Written Decisions that found Claim 1 of the ’631
`Patent invalid as obvious, but that upheld the other challenged claims. The PTAB’s decision not to
`cancel the challenged claims of the ’071 Patent and ’044 Patent, however, was based entirely on its
`construction of a single key term appearing in all of the patent claims asserted here—“flat flexible
`cable” or “FFC.” Defendants intend to appeal the PTAB’s Final Written Decisions, including to
`request that the U.S. Court of Appeals for the Federal Circuit overturn the PTAB’s erroneous claim
`construction—which the Federal Circuit reviews de novo—and therefore find the claims
`unpatentable. Under these circumstances, it makes sense to continue the stay of this action pending
`the appeals, which could be case dispositive.
`If the Federal Circuit agrees with the Defendants and concludes that the remaining asserted
`claims in this case are unpatentable under the proper construction of the “FFC” term, then this case
`must be dismissed. Even if the Federal Circuit disagrees with the Defendants, however, there is a
`benefit to awaiting the results of the appeal, as the Federal Circuit will have decided the
`construction of a key term of the asserted patent claims. It is therefore in the interests of justice to
`await the Federal Circuit’s decision, as opposed to this Court conducting a parallel claim
`construction proceeding, which would then later be subject to the Federal Circuit’s de novo review
`in any event. Moreover, the other two relevant factors for a stay—the stage of the case and lack of
`undue prejudice—also favor continuing the stay, just as the Court found when it denied Plaintiff’s
`last attempt to prematurely lift the stay (Dkt. No. 69). After all, a stay will defer, or render moot,
`expensive fact discovery and a claim construction process on the three patents-in-suit.
`
`Defendants’ Motion to Continue the Stay
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`Accordingly, Defendants respectfully request that the Court continue the stay of this case
`pending the appeals to the Federal Circuit.
`
`II.
`
`BACKGROUND
`Plaintiff filed this suit against Defendants Acer Inc. and Acer America Corp., in May 2016,
`asserting infringement of the three patents-in-suit. Plaintiff later served its infringement contentions
`in May 2017, specifically asserting Claims 1-4 of the ’071 and ’044 Patents and Claims 1-2 of the
`’631 Patent.
`Luxshare Precision Industry Co., Ltd. subsequently filed IPR petitions in May and June
`2017 challenging all of the asserted claims of the three patents-in-suit. Shortly thereafter, the Acer
`Defendants moved to stay the litigation pending final resolution of those three IPR proceedings.
`(Dkt. No. 58.) Instead of filing an opposition to Acer’s Motion to Stay, Plaintiff Bing Xu stipulated
`to stay the case pending resolution of the IPR proceedings. (Dkt. No. 59.) The Court entered the
`parties’ Joint Stipulation on July 28, 2017 and ordered that “that this case is stayed in its entirety
`until the Patent Office issues Final Written Decisions regarding the IPR proceedings filed by
`Luxshare Precision Industry Co., Ltd. concerning the three asserted patents in this case.” (Dkt.
`No. 61.)
`In June 2017, Plaintiff filed an amended complaint to add the Luxshare Defendants as
`parties. The Luxshare Defendants have not yet responded to the amended complaint, as the case
`has been stayed in the interim.
`In January 2018, all three IPR petitions were instituted for trial under Case Nos. IPR2017-
`01404 (the ’071 Patent), IPR2017-01492 (the ’044 Patent), and IPR2017-01657 (the ’631 Patent).
`The PTAB issued its Final Written Decisions in the three IPR proceedings on January 10 and 11,
`2019. (Declaration of Christopher Kao (“Kao Decl.”), Ex. A (’071 Patent), Ex. B (’044 Patent), and
`Ex. C (’631 Patent).) The PTAB upheld Claims 1-20 of the ’071 Patent (Ex. A at 42), Claims 1-20
`of the ’044 Patent (Ex. B at 41), and Claim 2 of the ’631 Patent (Ex. C at 54). However, the PTAB
`found that Luxshare established that Claim 1 of the ’631 Patent is invalid and cancelled it. (Ex. C at
`54.) Thus, asserted Claims 1-4 of the ’071 and ’044 Patents and Claim 2 of the ’631 Patent remain
`after the IPR proceedings.
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`Defendants’ Motion to Continue the Stay
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`With respect to the claims that were upheld, the PTAB’s Final Written Decisions were based
`entirely on its construction of a key claim term in dispute for all three patents-in-suit: “flat flexible
`cable” or “FFC.” (See Exs. A, B, C.) Specifically, contrary to the claim construction that it had
`adopted in its Institution Decisions, the PTAB changed course in its Final Written Decisions, and
`held that the “FFC” claimed in the ’071 and ’044 Patents is limited to a cable with “a single layer of
`insulation such that it does not contain individually insulated conductors.” (Ex. A at 33; Ex. B. at
`32.) For the similar ’631 Patent, however, the PTAB found inconsistently in its Final Written
`Decision that the claimed FFC was not limited to a single layer of insulation, such that it could have
`individually insulated conductors. (Ex. C at 27.) Because the prior art of record in the three IPR
`proceedings discloses individually insulated conductors, the PTAB upheld the challenged claims of
`the ’071 and ’044 Patents. (See Ex. A at 33-41; Ex. B at 33-40.) However, due to its broader—and
`inconsistent—definition of the same term, “FFC,” for the ’631 Patent, the PTAB found Claim 1 of
`that patent obvious. (Ex. C at 32-48.)1
`The deadline to file a notice of appeal with the PTAB for the three IPR proceedings is
`March 14, 2019. 35 U.S.C. § 142; 37 C.F.R. § 90.3(a)(1). On or before that deadline, Defendants
`plan to appeal each of the PTAB’s Final Written Decisions to the Federal Circuit, and a primary
`issue on appeal will be the PTAB’s construction of the “FFC” term that affects each and every
`claim of all three patents-in-suit.
`According to the Federal Circuit’s most recent statistics, the median time to disposition of an
`appeal is 14 months from the docketing date. (Ex. D.) Thus, barring extensions of time, the appeal
`in this case should be decided by May 2020.
`III. THE STAY SHOULD CONTINUE PENDING APPEAL.
`In deciding whether to stay patent litigation pending IPR-related proceedings, courts
`generally consider three factors: (1) “whether a stay will simplify the issues in question and trial of
`the case;” (2) “whether discovery is complete and whether a trial date has been set;” and
`(3) “whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-
`
`1 The PTAB found that Claim 2 of the ’631 Patent was not obvious based on a separate ground,
`which will be appealed as constituting legal and factual error, as well. (See Ex. C at 48-50.)
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`Defendants’ Motion to Continue the Stay
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`moving party.” PersonalWeb Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1025 (N.D. Cal.
`2014); In re Cygnus Telecomms. Tech., LLC, Patent Litig., 385 F. Supp. 2d 1022, 1023 (N.D. Cal.
`2005); Lam Research Corp. v. Flamm, No. 15-CV-01277-BLF, 2016 WL 4180412, at *2 (N.D. Cal.
`Aug. 8, 2016); Evolutionary Intelligence, LLC v. Facebook, Inc., No. 13–cv–04202–SI, 2014 WL
`261837, at *1 (N.D. Cal. Jan. 23, 2014).
`All three factors weigh strongly in favor of maintaining the stay here.
`A.
`Resuming Litigation Now Would Complicate The Issues For Trial, While
`Continuing The Stay Will Simplify The Case Or Dispose Of It.
`
`Defendant Luxshare’s IPRs have already simplified this case by cancelling Claim 1 of the
`’631 Patent as obvious and narrowing the parties’ disputes to just a few issues—primarily the
`construction of the “FFC” term that appears in all asserted independent claims. Given that the
`Federal Circuit’s resolution of the proper construction of the “FFC” term—which it will consider de
`novo, see CardSoft, LLC v. VeriFone, Inc., 807 F.3d 1346, 1350 (Fed. Cir. 2015) —is potentially
`case dispositive, the Court should maintain the stay during the appeal.
`This is particularly so given that the PTAB’s Final Written Decisions adopted inconsistent
`and erroneous constructions for the “FFC” term, which the Federal Circuit must address. With
`respect to the asserted claims in the ’071 Patent and the ’044 Patent, the PTAB upheld those claims
`solely based on the new construction of “FFC” adopted in its Final Written Decisions.2 (See Ex. A
`at 33-41; Ex. B at 33-40.) With respect to the ’631 Patent, which includes substantially the same
`limitations as Claim 1 of the ’071 Patent and ’044 Patent (while including additional elements), the
`PTAB nevertheless invalidated Claim 1 of the ’631 Patent based on a broader construction of
`“FFC” in that patent. (See Ex. C at 32-48.) These decisions are inconsistent and cannot be
`supported by the evidence before the PTAB.
`The Federal Circuit’s determination of the proper construction of the term “FFC” is
`potentially case dispositive. If the Court adopts the Defendants’ proposed construction, all of the
`
`
`2 This new construction was completely different than the construction the PTAB adopted on
`institution of the three IPRs, in which the PTAB originally concluded that the asserted claims were
`likely invalid.
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`Defendants’ Motion to Continue the Stay
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`asserted claims of the patents-in-suit may be invalidated. See VirtualAgility Inc. v. Salesforce.com,
`Inc., 759 F.3d 1307, 1314 (Fed. Cir. 2014) (PTAB proceedings that “could dispose of the entire
`litigation [are] the ultimate simplification of issues.”). Because Defendants’ appeal has the potential
`to “moot all or some of the case,” a stay pending appeal is warranted. Id.
`Without the benefit of a continued stay, the parties will also be subjected to parallel
`litigation in two separate venues without any certainty as to what ultimate conclusion will govern
`this case. Indeed, if the parallel litigations proceed, this Court’s eventual construction of the “FFC”
`claim term would likely undergo Federal Circuit review anyway. Maintaining the stay can therefore
`simplify the case, even if the appeal is not completely dispositive, by preventing the possibility of
`inconsistent results, such as could result here if the Court were to construe “FFC” differently than
`the Federal Circuit. See Microsoft Corp. v. Tivo Inc., No. 10–cv–240–LHK, 2011 WL 1748428, at
`*5 (N.D. Cal. May 6, 2011) (holding that, because it is possible that the Court and the other tribunal
`could reach inconsistent conclusions regarding the same patent, there is a significant concern of
`wasting resources by proceeding forward). Such an outcome is untenable, and it makes sense to
`await the Federal Circuit’s decision on the IPR appeals.
`This factor therefore clearly favors maintaining the stay. See Realtime Data LLC v. Silver
`Peak Sys., Inc., No. 17-CV-02373-PJH, 2018 WL 3744223, at *2 (N.D. Cal. Aug. 7, 2018)
`(“[W]aiting for the conclusion of the pending appeals and PTAB decisions advances the court’s and
`parties’ interests in avoiding unnecessary expenditure of resources.”); Safe Storage LLC v. Dell Inc.,
`No. 12-1624-GMS, 2016 U.S. Dist. LEXIS 181116, at fn. 1 (D. Del. Mar. 11, 2016) (denying
`motion to lift stay and finding that “the Federal Circuit’s final adjudication on the IPR appeals will
`simplify the issues for trial.”); In re: Ameranth Pat. Lit. Cases, No. 11cv1810 DMS (WVG), 2015
`WL 12868116, at *2 (S.D. Cal. Jun. 4, 2015) (denying motion to lift stay and noting “[i]t makes
`little sense to proceed on those claims that are not on appeal when related claims are on appeal.”);
`see also Los Angeles Biomed. Research Institute at Harbor-UCLA Med. Ctr. v. Eli Lilly and Co.,
`No. LA CV13-08567 JAK (JCGx), 2015 WL 10635643, at *1 (C.D. Cal. Dec. 1, 2015) (denying
`motion to lift stay because completion of pending appeals “may obviate or simplify the issue”);
`Pragmatus AV, LLC v. Facebook, Inc., No. 5:11-CV-2168 JED, 2012 WL 381214, at *4 (N.D. Cal.
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`Defendants’ Motion to Continue the Stay
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`Feb. 6, 2012) (continuing stay pending BPAI appeal “will simplify the issues in question in this
`case”).
`
`B.
`The Stage of This Case Favors a Stay.
`The second factor overwhelmingly favors maintaining the stay. This case is undoubtedly in
`its early stages, as the Court already found when it denied Plaintiff’s previous attempt to lift the
`stay. (Dkt. No. 69 at 2 (“Here, the case is in its early stages.”).) Nothing has happened in this
`litigation since it was stayed and since the Court denied Plaintiff’s previous motion. The trial date
`has not even been scheduled, nor has claim construction occurred. And although some document
`production and written discovery has been exchanged, discovery remains far from complete. No
`depositions have been taken by either side. Expert discovery has not even started. The parties have
`not filed claim construction briefs or summary judgment motions. Moreover, the case was stayed
`before the deadline for the Luxshare Defendants to even respond to the complaint.
`This factor therefore weighs strongly in favor of a stay. See Advanced Micro Devices, Inc.
`v. LG Elecs., Inc., et al., Case No. 14-cv-01012-SI, 2015 WL 545534, at *2 (N.D. Cal. Feb. 9, 2015)
`(finding this factor favored a stay because discovery was “far from complete” and “a trial date has
`not been set, no expert reports have been served, no depositions have been taken, no claim
`construction briefs or summary judgment motions have been filed”); Cypress Semiconductor Corp.
`v. LG Elecs., Inc., Case No. C 13-4034 SBA, 2014 WL 5477795, at *2 (N.D. Cal. Oct. 29, 2014)
`(finding that the stage-of-case factor favored a stay, even where claim construction briefing was
`complete, but “[t]here has been no dispositive motion practice, the claims have not been construed,
`and no deadlines for completing discovery, motion practice or trial have been set”); Affinity Labs of
`Tex. LLC v. Samsung Elecs. Co., Ltd., No. 14-CV-2717 YGR, 2014 WL 3845684, at *2 (N.D. Cal.
`Aug. 1, 2014) (factor favored stay even where claim construction order had issued); PersonalWeb
`Techs., LLC v. Facebook, Inc., Case Nos. 5:13-CV-01356-EJD, 5:13-CV-01358-EJD, 53-CV-
`01359-EJD, 2014 WL 116340, at *3 (N.D. Cal. Jan. 13. 2014) (stage-of-case factor favored stay
`where “a claim construction order has been issued and the close of fact discovery is fast
`approaching” but “a substantial portion of the work–expert discovery, summary judgment, pre-trial
`preparation, and trial itself–lies ahead”); AT&T Intellectual Prop. I, et al. v. Tivo, Inc., 774 F. Supp.
`
`Defendants’ Motion to Continue the Stay
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`6
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`Case 5:16-cv-02491-EJD Document 73 Filed 02/22/19 Page 12 of 14
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`2d 1049, 1052 (N.D. Cal. 2011) (stay appropriate where parties had not exchanged expert reports,
`conducted depositions, or filed dispositive motions, and where claim construction had been briefed
`but no hearing had been held and no trial date had been set).
`
`C.
`A Stay Will Not Unduly Prejudice Plaintiff.
`As the Court found when denying Plaintiff’s last attempt to lift the stay, “[d]elay alone does
`not amount to undue prejudice,” and the “third factor weighs in favor of continuing the stay.” (Dkt.
`No. 69 at 3.) Again, the question under this factor is whether a stay would unduly prejudice or
`present a clear tactical disadvantage to the party resisting the stay, the Plaintiff here. PersonalWeb
`Techs., 69 F. Supp. 3d at 1025.
`A stay would neither unduly prejudice Plaintiff nor present a clear tactical disadvantage. It
`is undisputed that Plaintiff does not actually sell products that directly compete with the products
`sold by Defendants. As a company that does not directly compete with Defendants, Plaintiff would
`not be unduly prejudiced by a stay pending appeals of the IPRs to the Federal Circuit. See
`Convergence Techs. v. Microloops Corp., No. 10-cv-02051-EJD, 2012 WL 1232187, at *2 (N.D.
`Cal. April 12, 2012) (lack of undue prejudice weighs in favor of a stay, particularly where the
`parties are not in direct competition with one another). Because it has no competing products or
`services—and therefore no market to protect—any harm that Plaintiff might suffer during a stay
`could be remedied with monetary damages. See, e.g., VirtualAgility Inc., 759 F.3d 1307 at 1318
`(holding that “[a] stay will not diminish the monetary damages to which [the plaintiff] will be
`entitled if it succeeds in its infringement suit—it only delays realization of those damages.”);
`Pragmatus AV, LLC v. Facebook Inc., No. 11-cv-02168-EJD, 2011 WL 4802958, at *4 (N.D. Cal.
`Oct. 11, 2011) (“[C]ourts have consistently found that a [non-practicing entity] cannot be prejudiced
`by a stay because monetary damages provide adequate redress for infringement.”) (citation and
`internal quotation marks omitted). Indeed, Bing Xu has not sought preliminary injunctive relief in
`this action.
`Further, while this case may be delayed pending Federal Circuit review, “[c]ourts have long
`acknowledged that a delay inherent to a stay does not, in and of itself, constitute prejudice.”
`PersonalWeb Techs. LLC, 2014 WL 116340, at *5; Semiconductor Energy Lab. Co. v. Chimei
`
`Defendants’ Motion to Continue the Stay
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`7
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`Case 5:16-cv-02491-EJD Document 73 Filed 02/22/19 Page 13 of 14
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`
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`Innolux Corp., No. SACV 12-21-JST (JPRx), 2012 WL 7170593, at *3 (C.D. Cal. Dec. 19, 2012)
`(ruling that “the mere fact and length of any delay . . . does not demonstrate prejudice sufficient to
`deny [a] request for a stay”). Thus, any prejudice that Bing Xu might claim due to the mere passage
`of time, including for example, the possibility of employees leaving the company or witness
`memory fading, “are consequences that apply to any case where reexamination is sought and cannot
`alone demonstrate undue prejudice.” Evolutionary Intelligence LLC v. Yelp Inc., 2013 WL
`6672451, at *8 (N.D. Cal. Dec. 18, 2013).
`On the other hand, the Defendants would clearly be prejudiced if the stay is lifted. For
`example, Defendants (and Plaintiff) will be forced to litigate in two separate venues regarding
`overlapping issues, such as the construction of the key “FFC” term, as discussed above. There is no
`justification for this waste.
`IV. CONCLUSION
`For the foregoing reasons, Defendants respectfully request that the Court maintain the stay
`of this case pending resolution of the appeals to the Federal Circuit.
`
`Dated: February 22, 2019
`
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`Respectfully submitted,
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`
`/s/ Christopher Kao
`Christopher Kao (SBN 237716)
`
`Attorneys for Defendants
`Luxshare Precision Industry Co., Ltd. and
`Luxshare-ICT, Inc.
`
`
`
`
`TECHKNOWLEDGE LAW GROUP LLP
`
`/s/ Thomas J. Gray
`Thomas J. Gray (SBN 191411)
`
`
`Attorneys for Defendants Acer Inc. and
`Acer America Corporation
`
`Defendants’ Motion to Continue the Stay
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`8
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`Case 5:16-cv-02491-EJD Document 73 Filed 02/22/19 Page 14 of 14
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`
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`ATTESTATION
`In accordance with Civil L.R. 5-1(i)(3), I attest that concurrence in the filing of this document
`
`has been obtained from every other signatory to this document.
`
`
`
`
`
`
`/s/ Christopher Kao
`Christopher Kao
`
`Attorney for Defendants Luxshare Precision
`Industry Co., Ltd. and Luxshare-ICT, Inc.
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that on February 22, 2019, the foregoing document was
`electronically filed with the Clerk of the Court for the UNITED STATES DISTRICT COURT,
`NORTHERN DISTRICT OF CALIFORNIA, using Court’s Electronic Case Filing (ECF) system.
`The ECF system routinely sends a “Notice of Electronic Filing” to all counsel of record who have
`consented to accept this notice as service of this document by electronic means. Any party not
`receiving the Court’s electronic notification will be sent a copy of the foregoing document.
`
`
`/s/ Christopher Kao
`Christopher Kao
`
`
`
`
`
`
`
`Defendants’ Motion to Continue the Stay
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`9
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