Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 1 of 17 PageID #: 1001
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`PAYRANGE INC.,
`
`Plaintiff,
`
`v.
`
`CSC SERVICEWORKS, INC.,
`
`Defendant.
`
`
`
`
`Case No. 1:23-cv-00278-MN
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`JURY TRIAL DEMANDED
`
`Date: February 9, 2024
`
`DEFENDANT CSC SERVICEWORKS,
`INC.’S OPENING BRIEF IN SUPPORT OF
`MOTION TO STAY PENDING INTER PARTES REVIEW
`
`
`
`
`
`John C. Phillips, Jr. (#110)
`Megan C. Haney (#5016)
`PHILLIPS, MCLAUGHLIN & HALL, P.A.
`1200 North Broom Street
`Wilmington, DE19806
`(302) 655-4200
`jcp@pmhdelaw.com
`mch@pmhdelaw.com
`
`Attorneys for Defendant
`CSC ServiceWorks, Inc.
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 2 of 17 PageID #: 1002
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`
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ................................................................................................................... 1
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`II. STATEMENT OF NATURE AND STAGE OF PROCEEDINGS ........................................ 2
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`III. SUMMARY OF ARGUMENT ............................................................................................... 3
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`IV. LEGAL STANDARD ............................................................................................................. 4
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`V. ARGUMENT........................................................................................................................... 5
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`A.
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`B.
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`C.
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`Simplification of the Issues .............................................................................................. 5
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`Status of the Litigation ..................................................................................................... 9
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`Undue Prejudice or Clear Tactical Disadvantage .......................................................... 10
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`VI. CONCLUSION ..................................................................................................................... 13
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`ii
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 3 of 17 PageID #: 1003
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`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Cases
`
`454 Life Scis. Corp. v. ION Torrent Sys., Inc.,
`No. 15-595, 2016 WL 6594083 (D. Del. Nov. 7, 2016) ..........................................................11
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-CV-1107 (GMS), 2014 WL 1369721 (D. Del. Apr. 7, 2014) .......................................8
`
`British Telecommunications PLC v. IAC/InterActiveCorp,
`2019 WL 4740156 (D. Del. Sept. 27, 2019) ..................................................................7, 10, 13
`
`British Telecommunications PLC v. IAC/InterActiveCorp,
`2020 WL 5517283 (D. Del. Sept. 11, 2020) ..............................................................................5
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`C.A. No. 17-871, 2019 WL 1276029 (D. Del. Mar. 20, 2019)................................................11
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)..................................................................................................6
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`2019 WL 3943058 (D. Del. Aug. 21, 2019) .................................................................... passim
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`607 F. Supp. 3d 464 (D. Del. 2022) ...........................................................................................7
`
`Kannuu Pty Ltd. v. Samsung Elecs. Co., Ltd.,
`No. 19 CIV. 4297 (ER), 2021 WL 195163 (S.D.N.Y. Jan. 19, 2021), aff'd, 15
`F.4th 1101 (Fed. Cir. 2021) .......................................................................................................8
`
`MQ Gaming, LLC et al. v. LEGO Sys. Inc.,
`C.A. No. 19-905-MN (3/17/21 Oral Order) ...............................................................................7
`
`Nexans Inc. v. Belden Inc.,
`2014 WL 651913 (D. Del. Feb. 19, 2014) ...............................................................................13
`
`NFC Tech., LLC v. HTC America, Inc.,
`2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ....................................................................4, 11
`
`Nike, Inc. v. Lululemon USA Inc.,
`No. 22CV00082RAOTW, 2023 WL 2214884 (S.D.N.Y. Feb. 24, 2023) .................................8
`
`Pegasus Dev. Corp. v. Directv, Inc.,
`No. CIV.A. 00-1020-GMS, 2003 WL 21105073 (D. Del. May 14, 2003) ................................8
`iii
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 4 of 17 PageID #: 1004
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`Quest Diagnostics Investments LLC v. Lab. Corp. of Am. Holdings,
`C.A. No. 18-1436-MN, D.I. 166 (D. Del. Sept. 4, 2020) ..........................................................8
`
`RetailMeNot, Inc. v. Honey Science LLC,
`2020 WL 343341 (D. Del. Jan. 23, 2020) ..................................................................................9
`
`RetailMeNot, Inc. v. Honey Science LLC,
`2020 WL 373341 (D. Del. Jan. 23, 2020) ..................................................................................9
`
`TC Technology LLC v. Sprint Corp.,
`2021 WL 4521045 (D. Del. Oct. 4, 2021) ...............................................................................10
`
`Statutes
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`35 U.S.C. § 101 ............................................................................................................................1, 7
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`35 U.S.C. § 314(a) ...........................................................................................................................5
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`35 U.S.C. § 314(b)(1) ......................................................................................................................2
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`35 U.S.C. § 315(e)(2) .......................................................................................................................7
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`Other Authorities
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`37 C.F.R. § 42.100(c).....................................................................................................................12
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`Federal Rule of Civil Procedure 41 .................................................................................................2
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`iv
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 5 of 17 PageID #: 1005
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`I.
`
`
`
`INTRODUCTION
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`PayRange accuses defendant CSC ServiceWorks, Inc. (“CSC”) of infringing four patents
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`related to mobile payment technologies. In response, CSC filed four IPR petitions asking the
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`PTAB to review and invalidate the asserted claims from each patent. Although the PTAB denied
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`institution on two of the petitions, it granted institution on all asserted claims in one of them, and
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`another patent awaits a forthcoming institution decision on CSC’s pending IPR petition
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`challenging the sole asserted claim for that patent. CSC requests that the Court stay this action
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`pending final resolution of these IPR proceedings.
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`
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`In view of the substantial likelihood of issue simplification, a stay will promote the
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`efficiencies the IPR process was designed to achieve while furthering the just, speedy, and
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`inexpensive determination of this action. If CSC’s remaining IPR petitions are successful, two of
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`the four asserted patents in this case will no longer be at issue. Moreover, since all asserted patents
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`are from the same patent family and contain overlapping claim terms and subject matter, the
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`PTAB’s decisions in the pending IPR proceedings will provide valuable guidance to the District
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`Court, potentially narrow or eliminate disputes regarding claim construction, and prevent
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`inconsistent rulings between the PTAB and District Court on issues of claim scope and
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`interpretation. And if the ‘772 IPR petition is successful, the District Court need not rule on CSC’s
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`pending motion to dismiss the sole asserted claim of the ‘772 patent under 35 U.S.C. § 101. See
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`D.I. 14.
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`
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`Other factors weigh heavily in favor of a stay as well. This litigation is at a nascent stage
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`with the vast majority of discovery ahead. CSC will not gain a tactical advantage through the stay,
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`as it moved just a couple weeks after the PTAB issued institution decisions on the first three IPR
`
`petitions. Finally, PayRange will suffer no undue prejudice as PayRange and CSC do not compete
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`1
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 6 of 17 PageID #: 1006
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`in the same markets. And based on PayRange’s recent licensing deal with one of CSC’s vendors
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`(and PayRange’s competitor) regarding one of the two accused products in this case, PayRange
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`appears satisfied with monetary damages if PayRange can prove infringement of the sole
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`remaining accused product.
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`II.
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`STATEMENT OF NATURE AND STAGE OF PROCEEDINGS
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`PayRange first filed suit against CSC on April 19, 2022, alleging infringement of U.S.
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`Patent Nos. 8,856,045 (“the ‘045 patent”); 10,438,208 (“the ‘208 patent”); and 10,891,608 (“the
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`‘608 patent”). On August 23, 2022, PayRange voluntarily dismissed its complaint against CSC
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`under Federal Rule of Civil Procedure 41 prior to CSC answering the complaint. Seven months
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`later, on March 15, 2023, PayRange refiled suit against CSC, re-alleging infringement of the ‘045,
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`‘208, and ‘608 patents, and also alleging infringement of recently issued U.S. Patent No.
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`11,481,772 (“the ‘772 patent”). CSC filed IPR petitions challenging all asserted claims of the
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`‘045, ‘208, and ‘608 patents on July 17, 2023, and filed an IPR petition challenging the sole
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`asserted claim of the ‘772 patent on October 9, 2023.
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`On January 19, 2024, the PTAB instituted review of CSC’s IPR petition challenging all
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`asserted claims of the ‘045 patent. Ex. A, ‘045 Institution Decision. The PTAB denied institution
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`of the ‘208 and ‘608 patents around the same time. With respect to the ‘772 IPR proceedings,
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`PayRange filed its Patent Owner’s Preliminary Response to CSC’s IPR petition on January 18,
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`2024, and CSC anticipates the PTAB will issue its institution decision by April 18, 2024. See
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`IPR2023-01449; 35 U.S.C. § 314(b)(1).
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`
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`The parties are in the early stages of fact discovery. PayRange has served one set of
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`interrogatories and one set of requests for production, while CSC has served two sets of requests
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`for production and no interrogatories. Relatively few documents have been produced, and the
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`2
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 7 of 17 PageID #: 1007
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`parties are still negotiating an ESI protocol for custodial collections. No depositions have been
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`taken. Fact discovery remains open until July 25, 2024. Claim construction issue identification
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`and substantive claim construction briefing do not begin until March 21, 2024, and August 8, 2024,
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`respectively. The Markman hearing in this case is scheduled for October 24, 2024, while expert
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`discovery is slated to commence on December 12, 2024. Trial is not scheduled until September
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`22, 2025. See D.I. 24 (Scheduling Order).
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`
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`This case has also narrowed considerably in scope in just the last few days. The parties
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`conducted a two-day mediation in late January. On January 29, PayRange informed CSC that it
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`settled with CSC’s vendor, KioSoft, for one of the two accused products in this case. Ex. B, Jan.
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`29 Email from Ryan Smith. PayRange subsequently announced its settlement by press release. Ex.
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`C, PayRange Press Release. In view of this settlement, on January 30, PayRange served its Second
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`Amended Infringement Contentions dropping all allegations toward the KioSoft product. Ex. D,
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`Jan. 30, 2024 Cover Pleading to Second Amended Infringement Contentions. As such, only a
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`single accused product remains at issue in this case. See id.
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`III.
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`SUMMARY OF ARGUMENT
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`
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`The facts of this case favor an immediate stay. First, a stay will simplify—or eliminate—
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`issues for the case and trial, thereby streamlining the issues and promoting judicial economy. All
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`four asserted patents are in the same family and claim priority to the same provisional application.
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`See, e.g., D.I. 12 (FAC), ¶¶ 18, 34-38. The ‘045 patent shares subject matter, claim scope, and
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`claim language with other asserted patents, so the PTAB’s decisions in the pending ‘045 IPR will
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`have the collateral effect of narrowing issues with regard to other asserted patents. Second, the
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`nascent stage of the litigation favors a stay, as the most burdensome and costly aspects of
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`litigation—such as custodial document productions, claim construction, expert discovery,
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`3
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 8 of 17 PageID #: 1008
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`dispositive motions, and pretrial, trial, and post-trial proceedings—all lie ahead. Third, PayRange
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`will not suffer any prejudice or tactical disadvantages stemming from a stay because CSC promptly
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`filed its IPR petitions and diligently moved for a stay after institution. Further, CSC does not
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`compete in the same market as PayRange, and the IPR petitions are likely to significantly impact
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`the issues presented in this litigation.
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`IV.
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`LEGAL STANDARD
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`
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`District courts have broad discretion to control their own dockets, including the power to
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`stay proceedings. See IOENGINE, LLC v. PayPal Holdings, Inc., 2019 WL 3943058, at *2 (D.
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`Del. Aug. 21, 2019) (citing Clinton v. Jones, 520 U.S. 681, 706 (1997)). “In particular, the question
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`[of] whether to stay proceedings pending review by the Patent and Trademark Office (“PTO”) of
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`the validity of the patent or patents at issue in the lawsuit is a matter committed to the district
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`court’s discretion.” Id. (citing Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)).
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`“[A]fter the PTAB has instituted review proceedings, the parallel district court litigation
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`ordinarily should be stayed.” NFC Tech., LLC v. HTC America, Inc., 2015 WL 1069111, at *7
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`(E.D. Tex. Mar. 11, 2015). The legislative history of the AIA evidences a “liberal policy” in favor
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`of granting motions to stay pending instituted IPR proceedings. See IOENGINE, 2019 WL
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`3943058, at *4 (collecting cases). This Court has noted that Congress “intended for district courts
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`to be liberal in granting stays pending [post-grant] review” and “intended to place a ‘very heavy
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`thumb on the scale in favor of a stay being granted.’” Id. at *3.
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`
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`This Court generally weighs three factors in deciding whether to grant a stay pending inter
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`partes review of the patent(s) in suit: (1) whether a stay will simplify the issues for trial; (2) the
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`status of the litigation, particularly dates for the completion of discovery and trial; and (3) whether
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`a stay would cause undue prejudice to the non-movant or provide the movant with a clear tactical
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`4
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 9 of 17 PageID #: 1009
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`advantage. Id. at *2-3. While the three-factor test “is not a prescriptive template,” the factors all
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`favor issuing a stay of this litigation until the completion of the pending IPR proceedings against
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`the asserted patents. Id. at *4.
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`V.
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`
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`ARGUMENT
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`All factors weigh in favor of staying this litigation pending IPR. First, the pending IPRs
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`will simplify—or eliminate—many issues for trial. Second, this case is still in its infancy, and a
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`stay will avoid or simplify the most burdensome stages of the case. Third, a stay will not unduly
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`prejudice PayRange or provide CSC with a tactical advantage; rather, it will promote the
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`efficiencies that IPR proceedings were designed to achieve as a faster, less costly alternative to
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`civil patent litigation.
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`A.
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`Simplification of the Issues
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`
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`The most important factor in determining whether to issue a stay is whether the stay is
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`likely to simplify the issues at trial. See British Telecommunications PLC v. IAC/InterActiveCorp,
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`2020 WL 5517283 at *9 (D. Del. Sept. 11, 2020) (collecting cases). “Giving the agency the
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`authority to consider the validity of patents in the inter partes review process was designed in large
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`measure to simplify proceedings before the courts and to give the courts the benefit of the expert
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`agency’s full and focused consideration of the effect of prior art on patents being asserted in
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`litigation.” Id. (citing NFC Tech., LLC v. HTC Am., Inc., 2015 WL 1069111, at *4 (E.D. Tex.
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`Mar. 11, 2015)).
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`
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`The PTAB has instituted CSC’s IPR petition on all claims of the asserted ‘045 patent. Thus,
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`the PTAB has determined that there is a reasonable likelihood CSC will prevail in proving the
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`invalidity of at least one challenged claim. See 35 U.S.C. § 314(a). Furthermore, the sole asserted
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`claim of the ‘772 patent (claim 11) is subject to CSC’s pending IPR with an institution decision
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 10 of 17 PageID #: 1010
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`forthcoming. See IPR2023-01449. Should the PTAB find that the prior art renders the asserted
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`claims obvious, the asserted claims from two of the four patents at issue in this case will be
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`disposed of, eliminating those issues (and costly discovery related to those issues) from this
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`litigation. Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013) (“[W]hen
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`a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending
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`litigation in which the claims are asserted becomes moot.”).
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`
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`The instituted ‘045 IPR will also simplify issues relating to other asserted patents in this
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`suit. The ‘045 and ‘208 patents claim related subject matter with similar claim scope, contemplate
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`similar communication progressions across network components, and use often overlapping claim
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`terms. For example, the asserted claims in both patents require: (1) a mobile device receiving an
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`authorization request from a payment module associated with a payment accepting unit; (2) said
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`mobile device forwarding the authorization request to a server; (3) the mobile device receiving an
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`authorization grant from the server and forwarding the authorization grant to the payment module;
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`and (4) conducting a transaction with the payment accepting unit. See, e.g., D.I. 12 (FAC) at Ex.
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`1 (‘045 Patent) at Claim 1, Ex. 2 (‘208 Patent) at Claim 1. Moreover, both patents use similar claim
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`terms such as “authorization request,” “authorization zone,” “authorization grant,” and “server,”
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`which the PTAB will likely define or otherwise analyze in determining the validity of the
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`challenged claims in the ‘045 IPR proceeding. See, e.g., Ex. A at 5, 16-20. The PTAB’s guidance
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`on the meaning of these terms in comparison to disclosures in the prior art, as well as the claim
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`scope of the ‘045 patent as a whole, could significantly narrow disputes involving the construction
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`of claim terms common among several of the asserted patents and avoid inconsistent claim
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`interpretations between the PTAB and this Court.
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`6
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 11 of 17 PageID #: 1011
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`
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`Patent office statistics confirm it is unlikely that the asserted claims will remain wholly
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`intact following IPR. In 2023, 84% of the PTAB’s final written decisions resulted in cancellation
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`of at least some challenged claims, and 66% resulted in the cancellation of all challenged claims.
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`See Ex. E., PTAB Trial Statistics Fiscal Year 2023 at 11. A decision by the PTAB invalidating
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`even some of the asserted claims will greatly simplify the issues for trial by eliminating claims at
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`issue and limiting the parties’ arguments at trial. In the unlikely event the PTAB cancels none of
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`the asserted claims, the “expertise of the PTAB judges in this complex field of the art is likely to
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`be of considerable assistance to the Court.” See British Telecommunications PLC v.
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`IAC/InterActiveCorp, 2019 WL 4740156 at *9 (D. Del. Sept. 27, 2019) (collecting cases).
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`
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`A decision by the PTAB declining to cancel any of the asserted claims still simplifies the
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`issues for trial. For example, CSC will be estopped from asserting any invalidity theory that it
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`“raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2);
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`IOENGINE, LLC v. PayPal Holdings, Inc., 607 F. Supp. 3d 464, 509 (D. Del. 2022). Applying
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`IPR estoppel will simplify nearly every aspect of this case from expert discovery and claim
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`construction to dispositive motion briefing and trial. Moreover, if CSC is successful in challenging
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`the validity of the sole asserted claim of the ‘772 patent through IPR, this would obviate the need
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`for the Court to rule on CSC’s pending motion to dismiss the ‘772 patent under 35 U.S.C. § 101.
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`See D.I. 14. As such, a stay will streamline the issues for trial regardless of whether the asserted
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`claims are invalidated.
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`Furthermore, although not all asserted claims will be found unpatentable through the IPR
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`process, courts in this District have stayed civil patent litigations when only a subset of the asserted
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`patents are subject to instituted IPRs. See MQ Gaming, LLC et al. v. LEGO Sys. Inc.,, C.A. No.
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`19-905-MN (3/17/21 Oral Order) (granting motion to stay where instituted IPR proceedings
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`7
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 12 of 17 PageID #: 1012
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`covered five of the eight asserted patents) (Ex. F); Quest Diagnostics Investments LLC v. Lab.
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`Corp. of Am. Holdings, C.A. No. 18-1436-MN, D.I. 166 (D. Del. Sept. 4, 2020) (granting stay
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`where 3 of 4 patents were subject to instituted IPRs) (Ex. H). Even where IPR has been instituted
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`as to a relatively small percentage of the asserted patents, courts in this District and others regularly
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`issue stays pending IPR. See, e.g., Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`
`No. 12-CV-1107 (GMS), 2014 WL 1369721 (D. Del. Apr. 7, 2014) (concluding “the issue
`
`simplification to be had through PTO review of the claims subject to IPR petitions weighs in favor
`
`of a stay” where only two of the six asserted patents were subject to instituted IPRs); Pegasus Dev.
`
`Corp. v. Directv, Inc., No. CIV.A. 00-1020-GMS, 2003 WL 21105073 (D. Del. May 14, 2003)
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`(granting a stay due to the PTO granting a reexamination request for one of six asserted patents);
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`Nike, Inc. v. Lululemon USA Inc., No. 22CV00082RAOTW, 2023 WL 2214884, at *1 (S.D.N.Y.
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`Feb. 24, 2023) (“The PTAB's institution of any one of the six IPR petitions brought by Nike would
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`simplify the issues presented by this action.”); Kannuu Pty Ltd. v. Samsung Elecs. Co., Ltd., No.
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`19 CIV. 4297 (ER), 2021 WL 195163, at *8 (S.D.N.Y. Jan. 19, 2021), aff'd, 15 F.4th 1101 (Fed.
`
`Cir. 2021) (collecting cases) (granting a motion to stay where “the PTAB has instituted review on
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`only two of the five patents at issue. Further, the PTAB instituted review on only fourteen of the
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`thirty-seven patent claims identified in the First Amended Complaint.”).
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`
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`Though only the ‘045 patent is currently subject to an instituted IPR, this provides no
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`obstacle to issuing a stay. “[A] complete overlap of the issues in the litigation and the IPR is not
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`required to establish simplification of the case.” Bonutti, 2014 WL 1369721, at *5. The instituted
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`IPR of the ‘045 patent may dispose of nearly one-third of the asserted claims in this litigation, and
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`if the ‘772 IPR petition is instituted on the sole asserted claim from that patent in this case, the
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`asserted claims in half of the asserted patents could be cancelled. Accordingly, the first and most
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`8
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 13 of 17 PageID #: 1013
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`important factor weighs in favor of a stay. See RetailMeNot, Inc. v. Honey Science LLC, 2020 WL
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`373341, at *3 (D. Del. Jan. 23, 2020).
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`B.
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`Status of the Litigation
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`
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`The nascent stage of this litigation also favors a stay. Discovery here is still in its early
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`stages. Neither party has produced a significant number of documents, the parties are still
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`negotiating a custodial ESI protocol, and PayRange has only served 9 interrogatories. No
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`depositions have been taken (or even noticed). The parties are not scheduled to exchange initial
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`lists and proposed constructions of claim terms until March 21, 2024, while a Joint Claim
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`Construction Chart is not due to the Court until July 11, 2024. ECF No. 24. Substantive claim
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`construction briefing does not begin until August 8, 2024, and the parties’ Joint Claim
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`Construction Brief is due to the Court on September 19, 2024. Id. Meanwhile, expert discovery
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`does not begin for nearly a year, and trial is not set to begin for nearly two years—starting
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`September 22, 2025. ECF No. 24. A stay will preserve these resources (or at least mitigate the
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`expenditure thereof) if the PTAB invalidates some or all asserted claims during IPR. See
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`RetailMeNot, Inc. v. Honey Science LLC, 2020 WL 343341, at *6 (D. Del. Jan. 23, 2020) (“Here,
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`not only are depositions continuing, but this case is at an efficient stopping point in that a stay will
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`avoid further fact discovery, the entirety of expert discovery and associated expert reports, filing
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`and responding to dispositive and other pretrial motions, preparing for trial, going through the trial
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`process, and engaging in post-trial motion practice with regard to Honey’s counterclaim, i.e. ‘the
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`most burdensome stages of the case.’” (internal footnotes omitted)).
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`
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`Courts regularly stay cases that have matured far beyond the instant case. See IOENGINE,
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`2019 WL 3943058, at *4 (granting a stay when the parties had produced over 100,000 pages of
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`documents, conducted more than 110 hours of source code review, served and responded to dozens
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`9
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 14 of 17 PageID #: 1014
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`of interrogatories and over 250 requests for production, and served multiple third-party
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`subpoenas); see also British Telecommunications, 2019 WL 4740156, at * 4 (collecting cases).
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`Even where claim construction, expert discovery, and pretrial proceedings are complete, issuing a
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`stay will likely avoid the most burdensome stages of litigation. See id., at *7 (granting a stay less
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`than three months before trial, recognizing that preparation for trial, going through the trial process,
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`and post-trial motion practice all lay in the future); see also TC Technology LLC v. Sprint Corp.,
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`2021 WL 4521045, at *7 (D. Del. Oct. 4, 2021) (collecting cases).
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`Furthermore, PayRange just announced it has settled the largest portion of the case by
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`resolving all claims in its litigation with CSC’s largest payment technology partner, KioSoft. See
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`Ex. C. As a result, PayRange just served its Second Amended Infringement Contentions,
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`substantially changing the scope and complexion of the litigation. See Ex. D, Second Amended
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`Infringement Contentions (dropping all allegations toward KioSoft’s PayMobile product, with the
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`only remaining infringement accusations targeted toward CSC GO). With only one accused
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`product still at issue, this case is ripe for a stay. Conducting burdensome and expensive discovery,
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`document production, motion practice, and claim construction of four patents when only one
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`accused product remains at issue is an inefficient use of the parties’—and the Court’s—time and
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`resources. And, as discussed above, a stay will winnow down the issues and ensure that the parties
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`need only conduct targeted discovery on colorable disputes.
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`This case is still in its infancy, and denying a stay “would impose significant expenses that
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`might be avoided if the stay results in the simplification of further court proceedings.” IOENGINE,
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`2019 WL 3943058, at *5 (citing NFC Tech., LLC v. HTC America, Inc., 2015 WL 1069111, at *3
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`(E.D. Tex. Mar. 11, 2015)). Accordingly, this factor heavily favors a stay.
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`C.
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`Undue Prejudice or Clear Tactical Disadvantage
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 15 of 17 PageID #: 1015
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`PayRange will suffer no undue prejudice or clear tactical disadvantage from a stay of this
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`proceeding as to the remaining half of this case. Courts resolving this inquiry typically examine
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`four sub-factors: (1) the timing of the request for review; (2) the timing of the request for a stay;
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`(3) the status of the review proceedings; and (4) the relationship of the parties. IOENGINE, 2019
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`WL 3943058, at *5 (citing Ethicon LLC v. Intuitive Surgical, Inc., C.A. No. 17-871, 2019 WL
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`1276029, at *2 (D. Del. Mar. 20, 2019). All four sub-factors favor staying this case.
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`First, the timing of request for review favors a stay. CSC timely filed three IPR petitions
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`on July 17, 2023, four months after PayRange re-filed this action on March 15, 2023.1 CSC filed
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`its IPR petition against the newly asserted ‘772 patent on October 9, 2023, less than seven months
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`after suit was filed. Courts have consistently held that similar delays are reasonable “in light of the
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`complexity entailed in seeking inter partes review.” See, e.g., IOENGINE, 2019 WL 3943058, at
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`*6 (holding that a delay of six months was not unreasonable); Ethicon LLC v. Intuitive Surgical,
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`Inc., C.A. No. 17-871, 2019 WL 1276029, at *2 (D. Del. Mar. 20, 2019) (finding an 11-month
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`delay not unreasonable); NFC Tech. LLC v. HTC America, Inc., 2015 WL 1069111, at *4 (E.D.
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`Tex. Mar. 11, 2015) (collecting cases). CSC filed its IPR petitions as soon as practicable given the
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`timing of PayRange’s suit, so PayRange will not suffer any prejudice or tactical disadvantage due
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`to the timing of CSC’s requests for review.
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`Second, CSC files the instant motion a couple weeks after the PTAB’s institution of the
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`‘045 IPR petition. Filing a motion to stay pending IPR shortly after the PTAB’s institution
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`decision “is generally the ideal time at which to file such a request.” 454 Life Scis. Corp. v. ION
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`1 PayRange originally filed its action against CSC on April 19, 2022, before voluntarily dismissing
`the same on August 23, 2022.
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 16 of 17 PageID #: 1016
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`Torrent Sys., Inc., No. 15-595, 2016 WL 6594083, at *4 (D. Del. Nov. 7, 2016). CSC has thus
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`diligently moved for the requested stay.
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`Third, the status of the review favors institution. The PTAB instituted IPR proceedings
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`with respect to the ‘045 patent on January 19, 2024. By statute, the ‘045 IPR proceeding will be
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`completed by January 19, 2025. See 37 C.F.R. § 42.100(c). Moreover, the PTAB will likely issue
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`its institution decision regarding the ‘772 patent in April of this year and, if instituted, would issue
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`a final written decision in April 2025. See IOENGINE, 2019 WL 3943058, at *6 (“In addition,
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`institution decisions in the remaining petitions filed by Ingenico and PayPal will be made between
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`October and December of this year.”). “Thus, while the IPRs are not at an advanced stage, the
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`potential for the IPRs to significantly affect the litigation is high,” and “[t]he prospect that
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`contemporaneous IPR decisions will have a significant effect on the issues presented in the
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`litigation counsels in favor of a stay.” Id. at *6 (citing Huvepharma Eood v. Associated British
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`Foods, PLC, Civil Action No. 18-129, 2019 WL 3802472, at *1 (D. Del. Aug. 13, 2019)
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`(“Plaintiffs contemplate having anticipation and obviousness tried twice, whereas a stay will mean
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`that those issues will only need to be tried once.”)). Moreover, as discussed above, given the
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`similarities in subject matter across all asserted patents, the PTAB’s final written decision in the
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`‘045 IPR proceeding will likely impact core issues involving all asserted patents.
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`Fourth, the relationship of the parties favors a stay. CSC and PayRange do not compete in
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`the same markets. CSC provides laundry solutions and air vending services throughout the United
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`States, Canada, and Europe. See CSC ServiceWorks, About Us, available at
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`https://www.cscsw.com/about-us/. PayRange, by its own description, is a mobile payment vendor
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`partnering with customers in the “automated retail industry.” See PayRange, Our Team, available
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`at https://www.payrange.com/our-team/. A stay would, at worst, briefly delay PayRange’s efforts
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`Case 1:23-cv-00278-MN Document 53 Filed 02/09/24 Page 17 of 17 PageID #: 1017
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`at seeking monetary damages against the GO product, similar to the monetary damages PayRange
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`sought and secured against KioSoft’s PayMobile product. See Ex. C. But, “mere potential for delay
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`is insufficient to establish undue prejudice.” Nexans Inc. v. Belden Inc., 2014 WL 651913, at *2
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`(D. Del. Feb. 19,