Case 1:19-cv-00438-CMA-MEH Document 74 Filed 06/23/20 USDC Colorado Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`Judge Christine M. Arguello
`
`
`Plaintiff,
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`Defendants.
`
`
`Civil Action No. 19-cv-00438-CMA-MEH
`
`CELLECT LLC, a Colorado Limited Liability Company,
`
`
`
`v.
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`SAMSUNG ELECTRONICS CO., LTD., a Korean Corporation, and
`SAMSUNG ELECTRONICS AMERICA, INC., a New York Corporation,
`
`
`
`
`ORDER GRANTING DEFENDANT’S MOTION FOR STAY PENDING INTER PARTES
`REVIEW AND EX PARTE REEXAMINATION OF ASSERTED CLAIMS
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`
`
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`This matter is before the Court on Defendants Samsung Electronics Co., Ltd.,
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`and Samsung Electronics America, Inc.’s (collectively, “Samsung”) Motion to Stay
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`Pending Inter Partes Review and Ex Parte Reexamination of Asserted Claims. (Doc. #
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`56.) The Motion is fully briefed.1 (Doc. ## 60, 61, 67.) For the following reasons, the
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`Court grants the motion.
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`I.
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`BACKGROUND
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`Cellect is a technology development company that owns 21 patents covering,
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`inter alia, complementary metal-oxide semiconductor (“CMOS”) image sensor
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`1 The Court notes that Plaintiff Cellect LLC (“Cellect”) requested a hearing on the instant Motion.
`(Doc. # 60 at 15.) However, the Court has determined that a hearing would not materially assist
`in the disposition of the Motion.
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`

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`Case 1:19-cv-00438-CMA-MEH Document 74 Filed 06/23/20 USDC Colorado Page 2 of 17
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`technology. (Doc. # 1 ¶ 9.) CMOS technology is used in products with compact
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`cameras, such as smartphones. (Doc. # 1 ¶ 11.) This case involves 11 patents (the
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`“Asserted Patents”),2 including 56 claims (the “Asserted Claims”), which cover CMOS
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`technology. The Asserted Patents are all assigned to Cellect (Doc. # 1 ¶¶ 13–45) and
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`all have expired. (Doc. # 56 at 15.)
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`Cellect provided Samsung with notice of its patents in early 2014, and then
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`provided Samsung with in-person notice of its alleged infringements of the Asserted
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`Claims in February, 2014. (Doc. # 1 ¶ 46.) Five years later, on February 14, 2019,
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`Cellect filed its complaint (“the Complaint”) (Doc. # 1) alleging that Samsung infringed
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`the Asserted Claims. On May 28, 2019, Samsung filed a Motion to Dismiss pursuant to
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`Fed. R. Civ. P. 12(b)(6). The Court denied that motion. (Doc. # 38.)
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`On October 16, 2019, Samsung denied all of Cellect’s allegations in its Answer
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`(Doc. # 39) and asserted the affirmative defense that the Asserted Claims were invalid
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`pursuant to 35 U.S.C. §§ 102, 103, or 112. (Doc. # 39 ¶ 309.) After Samsung made
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`repeated attempts to obtain a finalized list of Asserted Claims, (Doc. # 56-6 at 1),
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`Cellect finally produced the list on December 19, 2019. (Doc. # 56 at 15.)
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`In mid-February 2020, just before the end of a year-long statutory filing period,
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`Samsung entered 5 ex parte reexamination (“EPR”) requests and 20 petitions for inter
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`partes review (“IPR”) with the United States Patent and Trademark Office (“PTO”)
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`challenging the validity of the Asserted Claims. (Doc. # 56 at 1.) On February 25, 2020,
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`2 The 11 Asserted Patents are numbered: 6,043,839; 6,275,255; 6,982,740; 9,186,052;
`9,198,565; 9,667,896; 6,982,742; 6,424,369; 6,452,626; 6,862,036; and 7,002,621.
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`2
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`Samsung filed the instant Motion to Stay. (Doc. # 56.) The PTO has granted all of
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`Samsung’s EPR requests, which cover 29 of the 56 Asserted Claims. (Doc. # 63 at 1.)
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`On March 2, and on June 18, 2020, Magistrate Judge Hegarty amended the
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`original Scheduling Order3 based on joint motions. (Doc. # 59; Doc. # 73.) Given the
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`amendments, several case deadlines are delayed. See (Doc. # 27). To date, Cellect
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`and Samsung have exchanged lists of claim terms to be construed and have filed the
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`Joint Disputed Claim Terms Chart. Samsung has also filed its Opening Claim
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`Construction Brief. All claim construction briefs are due July 17, 2020. Assuming the
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`proposed month for a Markman hearing, Samsung’s filing deadline for Final Invalidity
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`Contentions would be in early-October, 2020. Given the schedule for Opening and
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`Reply Expert Reports, discovery is unlikely to end until well into 2021. (Doc. # 27 at 10–
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`13.) No trial date has been set.
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`II.
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`LEGAL STANDARD
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`Congress has clearly expressed its intent regarding the purpose of allowing
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`issued patents to be evaluated for validity within the PTO: EPR, and by analogy IPR,
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`“will permit efficient resolution of questions about the validity of issued patents without
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`recourse to expensive and lengthy infringement litigation.” H.R. Rep. No. 96-1307, pt. 1,
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`at 2 (1980), as reprinted in 1980 U.S.C.C.A.N 6460, 6463.
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`A.
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`THE COURT’S POWER TO STAY PENDING IPR OR EPR
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`Courts have the inherent power to stay proceedings to manage their dockets.
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`Landis v. N. Am. Co., 299 U.S. 248, 254 (1936) (“[T]he power to stay proceedings is
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`3 Entered June 10, 2019. (Doc. # 27.)
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`3
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`incidental to the power inherent in every court to control the disposition of the causes on
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`its docket with economy of time and effort for itself, for counsel, and for litigants.”). With
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`respect to determining whether to stay a case based on IPRs and EPRs pending at the
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`PTO, courts consider:
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`(1) whether a stay will simplify the issues in question and streamline the
`trial; (2) whether discovery is complete and whether a trial date has been
`set; (3) whether a stay would unduly prejudice the nonmoving party or
`present a clear tactical advantage for the moving party; and (4) whether a
`stay will reduce the burden of litigation on the parties and on the court.
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`eSoft, Inc. v. Blue Coat Sys., Inc., 505 F. Supp. 2d 784, 787 (D. Colo. 2007) (applying
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`the four factors to a determination of whether to stay proceedings pending EPR)
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`(hereinafter “eSoft factors”); Kamstrup A/S v. Axioma Metering UAB, No. 19-cv-1669-
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`WJM-SKC, 2019 WL 6296699, at *2 (D. Colo. Nov. 25, 2019) (“The Court finds that
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`these factors continue to be helpful when considering whether to enter a stay pending
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`IPR proceedings.”). No one factor is determinative, and the totality of the circumstances
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`are considered. Broad. Innovation, L.L.C. v. Charter Commc'n, Inc., No. 03-cv-2223-
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`ABJ-BNB, 2006 WL 1897165, at *4 (D. Colo. July 11, 2006).
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`B.
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`INTER PARTES REVIEW
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`IPR is an adversarial process created by the Leahy-Smith America Invents Act
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`(“AIA”). 35 U.S.C. § 100 et seq (2011). One of Congress’s goals in enacting the AIA
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`was to reduce the burden of litigation on courts.4 More specifically, its purpose in
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`4 See H.R. Rep. No. 112-98, pt. 1, at 40 (2011) (“The legislation is designed to establish a more
`efficient and streamlined patent system that will improve patent quality and limit unnecessary
`and counterproductive litigation costs.”); see also 157 Cong. Rec. S1363 (daily ed. Mar. 8,
`2011) (Sen. Schumer commenting that “[l]itigation over invalid patents places a substantial
`burden on U.S. courts and the U.S. economy.”).
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`4
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`replacing the pre-AIA inter partes reexamination procedure with IPR in the AIA was to
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`“giv[e] the Patent Office significant power to revisit and revise earlier patent grants.”
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2139–40 (2016) (citing H.R. Rep.
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`No. 112-98, pt. 1, at 45, 48 (2011)); see 157 Cong. Rec. 9778 (2011) (Rep. Goodlatte
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`noting that IPR “screen[s] out bad patents while bolstering valid ones”).
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`IPR is considered to be at least a partial and, in some situations, a complete
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`alternative to litigation of patent validity issues. See SAS Inst., Inc. v. ComplementSoft,
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`LLC., 825 F.3d 1341, 1354 (Fed. Cir. 2016) (Newman, J., dissenting) (“The AIA
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`proceeding is structured as a complete alternative to litigation of these issues.”). The
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`pre-AIA inter partes reexamination process did not allow for discovery, expert evidence,
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`oral argument, the application of rules of evidence and procedure, and cross-
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`examination. IPR, on the other hand, does allow for such procedures, which further
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`corroborates that Congress intended IPRs to be a substitute for litigation. See 35 U.S.C.
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`§ 316(a); 42 C.F.R. §§ 42.51–.53, .57–.65, .70–.71.
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`IPR is conducted by administrative patent judges within the Patent Trial and
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`Appeal Board (“PTAB”) of the PTO, 35 U.S.C. § 6(4)(b), and those judges are “of
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`competent legal knowledge and scientific ability.” Id. § 6(a). As such, these experts
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`within the PTO are more likely come to correct decisions regarding the validity of patent
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`claims faster than would be achieved via litigation in district court. See SAS Inst., Inc.,
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`825 F.3d at 1354 (Newman, J., dissenting) (“Congress designed the AIA to achieve
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`expeditious and economical final resolution.”); see also 157 Cong. Rec. S1352 (daily
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`ed. Mar. 8, 2011) (Sen. Udall commenting that “a panel of experts is more likely to
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`5
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`reach the correct decision on a technical question compared to a jury composed of
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`laypeople.”).
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`IPR allows any third-party to challenge the validity of issued patents at the
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`PTAB.5 Id. § 311 (a)–(b). An IPR petition must be filed within one year of the initiation of
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`litigation alleging infringement of the claims sought to be challenged for validity. Id. §
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`315(b). Once a petition for IPR is filed, the patent owner can respond within 3 months,
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`justifying why review of the contested claims should not be instituted. 37 C.F.R. §
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`42.107(b); 35 U.S.C. § 313. The PTAB typically decides whether to institute IPR by the
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`later of three months of the filing date of the patent owner’s response or the due date for
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`such a filing. See Kamstrup A/S, WL 6296699, at *1; see also 77 Fed. Reg. 48,757
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`(Aug. 14, 2012). The PTAB institutes IPR if “there is a reasonable likelihood that at least
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`one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c).
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`Once IPR is instituted, the PTO evaluates the contested claims for patentability in
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`light of prior art in the form of patents or printed publications. 35 U.S.C. § 311(b). The
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`petitioner bears the burden of proving, by a preponderance of the evidence, that claims
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`are unpatentable. Id. § 316(e). The patent owner may amend the patent one time by
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`motion to cancel claims or to offer a reasonable number of substitute claims to be
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`considered by the PTAB. Id. § 316(d)(1)(A-B). Additional motions to amend may be
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`allowed to advance settlement negotiations. Id. § 316(d)(2).
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`5 IPR allows challenges only on the grounds of novelty or obviousness. 35 U.S.C. §§ 102–03.
`EPR, as discussed below, allows challenge also on the grounds of the patent’s specification. Id.
`§ 112.
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`6
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`The PTAB then renders a final written decision on the patentability of the
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`contested claims within one year from the date an IPR is instituted, although an
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`extension of 6 months for good cause is allowed. 37 C.F.R. § 42.100(c). In the final
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`decision, the PTAB may cancel claims because they are unpatentable. See 35 U.S.C.
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`§§ 102–03. Parties may also settle any issue; however, this does not preclude the
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`PTAB from continuing to issue a final decision regarding patentability. 37 C.F.R. §
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`42.74. Any party not satisfied with the final decision of the PTAB may request a
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`rehearing, Id. § 42.71(d)(2), or appeal the decision to the Federal Circuit. 35 U.S.C. §
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`141(c). Following a written decision by the PTAB, both the petitioner and any other real
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`party-in-interest are estopped from asserting in a civil action that a claim is invalid on
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`any ground that the petitioner raised or reasonably could have raised during IPR. Id. §
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`315(e).
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`C.
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`EX PARTE REEXAMINATION
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`EPR allows the PTO to correct mistakes it made during the initial patent
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`examination and granting process.6 The procedure was created to “provide an
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`inexpensive, expedient means of determining patent validity which, if available and
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`practical, should be deferred to by the courts . . . .” Snyder Seed Corp. v. Scrypton Sys.,
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`Inc., No. 98-CV-87S(H), 1999 WL 605701, at *2 (W.D.N.Y. June 11, 1999).
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`6 See, e.g., 3 Pub. Papers 2803 (Dec. 12, 1980) (President Carter commenting that the
`reexamination provisions are “the most significant improvement in our patent laws in more than
`a century.”).
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`7
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`Any person7 may, at any time during the enforceability of a patent, request EPR
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`of a patent on the basis of prior art consisting of patents or printed publications. 35
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`U.S.C. § 302; 37 C.F.R. 1.510(a). The PTO will determine whether a substantial new
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`question of patentability regarding any claim has been raised within three months of
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`receiving an EPR request. 35 U.S.C. § 303(a); 37 C.F.R. § 1.515(b)(1). If such a
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`question is raised, the PTO will order reexamination of the patent. 35 U.S.C. § 304.
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`After an order for EPR, the patent owner has the right to respond to the question(s)
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`raised and may amend or add new claims to narrow the patent. Id. EPR then proceeds
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`as does initial examination of a patent pursuant to 35 U.S.C. §§ 131–33. Id.
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`EPR is distinguishable from IPR in two significant ways. First, EPR is not
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`adversarial. After the first response from the patentee, the reexamination is effectively a
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`closed proceeding and no additional evidence or amendments are allowed. See id. §§
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`303–07. Second, a claim that survives EPR does not create estoppel against assertion
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`of invalidity in a civil action based on grounds that were, or could have been, raised.
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`See id. §§ 302–07. Only the patent owner has the right to appeal an unfavorable final
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`written decision of an EPR.8
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`7 Petitioners in EPR can be patent owners as well as third parties.
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` 8
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` 35 U.S.C. § 306 creates the patentee’s right to appeal an unfavorable reexamination decision
`to the PTAB pursuant to 35 U.S.C. § 134(b) and then, following an unfavorable PTAB decision,
`to the Federal Circuit pursuant to 35 U.S.C. § 141. 35 U.S.C. § 306 does not grant a patentee
`the right of appeal following a favorable patentability decision. Greenwood v. Seiko Instruments
`& Elecs., Ltd., No. CIV.A. 85-2812, 1988 WL 146050, at *2 (D.D.C. Jan. 13, 1988). Third-party
`appeals of final EPR decisions are not allowed. MPEP § 2273 (9th ed. Rev. 8, Jan 2018).
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`8
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`III.
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`DISCUSSION
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`When deciding whether to grant a stay when IPRs and/or EPRs are pending at
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`the PTO, the Court analyzes the eSoft factors, supra Section II.A, in light of the specific
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`procedural posture of the case. The analysis is mindful of Congress’s intent to allow for
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`reevaluation of issued patents within the PTO.
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`A.
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`SIMPLIFYING AND STREAMLINING TRIAL
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`When weighing this factor, courts consider (1) the role of the PTO’s expertise in
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`determining claim validity and the assistance such determination will assist the Court in
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`its own analysis and (2) whether “claims, arguments and defenses can be narrowed or
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`entirely disposed of . . . .” Broad. Innovation, L.L.C., 2006 WL 1897165, at *5 (quoting
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`Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983) (“One purpose of
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`the reexamination procedure is to eliminate trial of that issue . . . .”)).
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`Based on Samsung’s EPR and IPR filings with the PTO, Cellect’s Asserted
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`Claims face one or more of the following fates: they (1) survive intact because they are
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`not examined or reviewed because Samsung’s requests for EPR and IPR are denied;
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`(2) survive intact on their merits following reexamination or review; (3) are cancelled; or
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`(4) are narrowed by amendment.
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`The PTO has granted all 5 of Samsung’s EPR requests. In due course, the PTO
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`will review for validity at least 29 of Cellect’s 56 Asserted Claims. Thus, it is inevitable
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`that, in some way, any trial will be simplified by a stay of proceedings. Even assuming
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`that Cellect’s argument is correct—that that the odds are in its favor that the Asserted
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`Claims will survive EPR (and the possibly instituted IPRs), 29 of the 56 Asserted Claims
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`9
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`will be reexamined at the PTO. The Court will, therefore, gain valuable expert insight as
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`to the issues underlying claim validity.9 Gould, 705 F.2d at 1342 (“One purpose of the
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`reexamination procedure is to . . . facilitate trial of that issue by providing the district
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`court with the expert view of the PTO . . . .”); Softview Comput. Prods. Corp. v. Haworth,
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`Inc., No. 97 CIV. 8815 KMW HBP, 2000 WL 1134471, at *2 (S.D.N.Y. Aug. 10, 2000)
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`(“All prior art presented to the Court will have been first considered by the PTO, with its
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`particular expertise.”). As a result of these proceedings, at trial the Court will have the
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`benefit of the PTO’s expert analysis.
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`If, on the other hand, some of the Asserted Claims are cancelled or the
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`examination results in a narrowing of the claim scope, then the scope of the litigation is
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`similarly narrowed. Gould, 705 F.2d at 1342 (“One purpose of the reexamination
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`procedure is to eliminate trial of that issue (when the claim is canceled) . . . .”); .
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`Softview Comput. Prods. Corp., 2000 WL 1134471, at *3 (“If the reexamination
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`proceeding invalidates or narrows a claim or claims, the issues at trial will be
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`simplified.”).
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`Regardless of any statistical jousting the parties might engage in, at least one of
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`three outcomes is guaranteed at this point: (1) 29 of Cellect’s 56 Asserted Claims will be
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`reexamined and the Court will benefit from the expertise of the PTO at any trial; (2)
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`some of the Asserted Claims are cancelled, necessarily narrowing the scope of any
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`trial; or (3) some of the Asserted Claims are narrowed by amendment and any trial is
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`9 EPR is conducted by an expert patent examiner, MPEP § 2236 (9th ed. Rev. 8, Jan 2018),
`and IPR is conducted by a panel of three administrative law judges who are “persons of
`competent legal knowledge and scientific ability”. Id § 1202(a)–(c).
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`10
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`streamlined. Therefore, staying proceedings at this point will result in a simpler and
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`more streamlined trial, and this weighs in favor of granting Samsung’s Motion to Stay.
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`B.
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`STATUS OF DISCOVERY AND DATE FOR TRIAL
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`When weighing this factor, courts look not only to whether discovery has been
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`completed and a trial date has been set, but also to other aspects of litigation
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`proceedings such as summary judgment arguments and the status of the final pretrial
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`order.10 Broad. Innovation, L.L.C., 2006 WL 1897165, at *8 (citing Gioello Enters. Ltd. v.
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`Mattel, Inc., No. C.A. 99-375 GMS, 2001 WL 125340, at *1 (D. Del. Jan. 29, 2001)
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`(noting that future motions for summary judgment could be rendered moot by decisions
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`from the PTO)); Softview Comput. Prods. Corp., 2000 WL 1134471, at *3 (noting “the
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`Pretrial Order has not yet been prepared.”). In this case, the Court is not persuaded that
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`discovery has proceeded so far as to weigh significantly against staying proceedings.
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`To date the parties have served requests for production and interrogatories, with
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`each fulfilling such requests. The parties have also filed a Joint Disputed Claim Terms
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`Chart, and Samsung has filed its opening Claim Construction Brief. Little else of
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`substance has happened, however. Also, proceedings have been delayed by several
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`motions—including, ironically, two joint motions—to amend the Scheduling Order. Given
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`those delays and the normal course of litigation, fact discovery in this case is unlikely to
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`10 The Court recognizes the fact that there is significant variation in when, during litigation
`proceedings, a stay pending IPR or EPR might be granted. Compare, e.g., Gould, 705 F.2d at
`1342 (granting a motion to stay 5 years into litigation and 20 days before trial), with e.g., Tru-
`Balance, LLC v. Alcoa, Inc., No. 11-cv-01127-CMA-BNB, 2012 WL 619114, at *1 (D. Colo. Feb.
`27, 2012) (granting a stay when discovery was not complete and no trial date had been set).
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`11
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`be completed until the end of 2020, with expert discovery unlikely to conclude until early
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`2021. Moreover, no trial date has been set.
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`In short, this case is in a relatively early stage of the proceedings and this weighs
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`in favor of granting Samsung’s Motion to Stay.
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`C.
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`UNDULY PREJUDICING THE NONMOVING PARTY
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`In weighing this factor, courts evaluate (1) whether a delay caused by a stay of
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`proceedings unduly prejudices the remedy to which the nonmoving party is entitled, and
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`(2) whether the movant unfairly gains a tactical advantage from any stay granted.
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`Broad. Innovation, L.L.C., 2006 WL 1897165, at *10. The Court is not persuaded that
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`Cellect will be unduly prejudiced by granting Samsung’s Motion to Stay or that a stay
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`would create a strategic advantage for Samsung.
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`Courts frequently find that mere delay caused by IPR is not prejudicial. See, e.g.,
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`Photoflex Prods., Inc. v. Circa 3 LLC, No. C 04-03715 JSW, 2006 WL 1440363, at *2
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`(N.D. Cal. May 24, 2006) (“The delay inherent to the reexamination process does not
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`constitute, by itself, undue prejudice.”); Micrografx, LLC v. Samsung Telecomm. Am.,
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`LLC, No. 3:13-CV-3599-N, 2014 WL 8239371, at *1 (N.D. Tex. July 9, 2014) (“A delay
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`caused by the inter partes review process, without more, does not justify denial of a
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`stay.”). In this case, the Asserted Patents have all expired. Cellect’s requested remedy
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`of damages is, therefore, capped at amounts determined by any pre-expiration
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`infringements of any claims that survive IPR, EPR, or review in court. The relief
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`requested is, therefore, not unduly prejudiced by any delay due to a stay of
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`proceedings.
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`12
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`Furthermore, and as discussed above, IPR provides a more efficient and timely
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`resolution to disputes of patent validity than can be achieved by litigation. It is entirely
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`unclear whether validity proceedings in district court would proceed any more
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`expeditiously than they would at the PTO. Although there certainly exists the possibility
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`of delay due to extension of the IPR process by the PTAB, the exercise of the right to
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`appeal for rehearing at the PTAB, and exercise of the right of appeal to the Federal
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`Circuit, those delays are merely speculative.
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`Cellect contends that a stay is prejudicial because it wishes to pursue claims for
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`infringement against other alleged infringers, but that it can proceed in only one case at
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`a time due to its limited resources. 35 U.S.C. § 286 bars recovery for infringement
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`having occurred “more than six years prior to the filing of a complaint.” While a delay of
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`proceedings that limits recovery in a subsequent action by Cellect may represent undue
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`prejudice, nothing suggests that parallel proceedings at the PTO and in this Court would
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`be any more expeditious than would proceedings in this Court alone. If anything, and as
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`discussed above, the Court is likely to be more efficient in its proceedings because of
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`the PTO’s expert findings.
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`When two parties are in competition in the marketplace, there is a risk that a
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`patent-holder whose patent is being infringed will be prejudiced in ways that are not
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`easily calculated to render monetary damages. Universal Elecs., Inc. v. Universal
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`Remote Control, Inc., 943 F. Supp. 2d 1028, 1033–34 (C.D. Cal. 2013) (citing ADA
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`Sols., Inc. v. Engineered Plastics, Inc., 826 F. Supp. 2d 348, 350–51 (D. Mass. 2011)
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`(“A common complaint among litigating patent-holders is that a stay prevents them from
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`vindicating their patent rights for an extended period of time . . . . This prejudice is
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`heightened when parties to litigation are direct competitors . . . .”)). In this case,
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`however, Cellect and Samsung do not directly compete in the same market. Rather,
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`Cellect creates, develops, and licenses technology, while Samsung designs,
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`manufactures, and sells products.
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`To determine whether Samsung obtains a tactical advantage from a stay of
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`proceedings, the Court considers the timing of Samsung’s IPR petition filings at the
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`PTO. Samsung’s IPRs were filed, nearly to the day, at the end of the 1-year statutory
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`period for filing IPR requests once litigation has been commenced. Some courts have
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`found that such timing of filing is reasonable, while other courts consider it an attempt to
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`obtain an unfair tactical advantage. Compare, e.g., ACQIS, LLC v. EMC Corp., 109 F.
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`Supp. 3d 352, 359 (D. Mass. 2015) (finding that filing IPR petitions within a week of the
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`statutory deadline was not unreasonable, stating, “[i]t was reasonable for EMC to wait
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`for ACQIS to choose which claims it intended to assert in the litigation before pursuing
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`IPRs”), with e.g., Pragmatus Mobile, LLC v. Amazon.com, Inc., No. CV 14-436-LPS,
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`2015 WL 3799433, at *1 (D. Del. June 17, 2015) (“The timing of Moving Defendants’
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`filing suggests they may be seeking a tactical advantage, given they were aware of the
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`prior art asserted in their IPR petition many months before filing the petition just three
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`days before the statutory deadline.”).
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`In this case, Cellect initiated the litigation on February 14, 2019. It did not,
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`however, send a finalized list of Asserted Claims to Samsung until Dec 19, 2019.
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`Samsung, therefore, had only about three months to file its 22 IPRs at the PTO. Any
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`delay in making a filing of such magnitude, even if it creates a tactical advantage,
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`cannot reasonably or fairly be attributed to Samsung. Therefore, based on the totality of
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`the circumstances, any delay experienced by Cellect does not weigh against granting
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`Samsung’s Motion to Stay.
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`D.
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`REDUCING THE BURDEN OF LITIGATION
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`In determining whether a stay of proceedings pending IPR and/or would reduce
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`the burden of litigation, courts consider (1) the impact of prior art evaluation by the PTO
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`during IPR and EPR; (2) any reduction in costs to the judiciary and to the parties; and
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`(3) the likelihood that claims will be narrowed or cancelled. Softview Comput. Prods.
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`Corp., 2000 WL 1134471, at *2 (citations omitted). “Courts recognize that shifting the
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`patent validity issue to the PTO has many advantages, including . . . all prior art
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`presented to the court will have been first considered by the PTO . . . .” eSoft, Inc., 505
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`F. Supp. 2d at 786.
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`In this case, the PTO will minimally review 29 of the 56 Asserted Claims for
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`validity based on its grant of Samsung’s 5 EPR requests. As discussed above, any
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`review of the prior art or any narrowing or cancelling of claims by the PTO, simplifies
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`proceedings at trial. See supra section III.A. Such simplification reduces the burden of
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`litigation on the Court and on the parties. If Samsung’s IPRs are instituted, further
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`review and possible narrowing or canceling of the Asserted Claims by the PTO would
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`further simplifies the issues before the Court. Therefore, the burdens of litigation –
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`particularly the parties’ anticipated substantial costs for factual and expert discovery,
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`and the Court’s time – are accordingly reduced.
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`Moreover, if the Asserted Claims survive any instituted IPR, Samsung will be
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`estopped from asserting in litigation that a claim is invalid on any ground that it raised or
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`reasonably could have raised during IPR. 35 U.S.C. § 315(e). This also reduces the
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`burden of litigation on the Court and on the parties by narrowing the scope of the
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`matters before the Court.
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`Staying proceedings will likely reduce the burden of litigation on the Court and
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`the parties, which weighs in favor of granting Samsung’s Motion to Stay.
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`In summary, based on the four factors articulated by the eSoft court, and
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`considering both the totality of the circumstances and Congress’s intent in enacting the
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`EPR statute, and its reform of inter partes reexamination into its current AIA form of
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`IPR, the scales tip heavily in favor of granting Samsung’s Motion to Stay.
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`IV.
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`CONCLUSION
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`Based on the foregoing, it is ORDERED by the Court that:
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`(1) Defendant’s Motion to Stay Pending Inter Partes Review and Ex Parte
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`Reexamination of Asserted Claims (Doc. # 56) is GRANTED;
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`(2) This case is STAYED from the date of this Order until further notice; and
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`(3) The parties shall advise the Court, within seven days, of the PTO’s written decisions
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`to institute Samsung’s pending petitions for IPR, and of any final decisions arising
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`out of any instituted IPRs and the granted EPRs. Additionally, the parties shall
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`submit quarterly status updates informing the Court of any relevant developments
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`beginning September 28, 2020.
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`DATED: June 23, 2020
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`BY THE COURT:
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`_____________________________
`CHRISTINE M. ARGUELLO
`United States District Judge
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