IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ALLIANCE LAUNDRY SYSTEMS LLC,
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` Plaintiff,
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`v.
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`PAYRANGE LLC,
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` Defendant.
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` C. A. No.: 24-733-MN
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` JURY TRIAL DEMANDED
`PLAINTIFF ALLIANCE LAUNDRY SYSTEMS, INC.’S
`OPPOSITION TO DEFENDANT’S MOTION TO PARTIALLY LIFT STAY
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Melanie K. Sharp (No. 2501)
`James L. Higgins (No. 5021)
`Gianna C. Penezic (No. 7442)
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`msharp@ycst.com
`
`jhiggins@ycst.com
`gpenezic@ycst.com
`HONIGMAN LLP
`Sarah E. Waidelich
`315 East Eisenhower Parkway, Suite 100
`Ann Arbor, MI 48108
`(734) 418-4200
`
`Scott Barnett
`39400 Woodward Avenue, Suite 101
`Bloomfield Hills, MI 48304
`(248) 566-8496
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`Jenna E. Saunders
`321 N. Clark Street, Suite 500
`Chicago, IL 60654
`(312) 701-9300
`
`Attorneys for Plaintiff Alliance Laundry
`Systems, LLC
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`Attorneys for Alliance Laundry Systems LLC
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`Dated: November 25, 2025
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`Case 1:24-cv-00733-MN Document 45 Filed 11/25/25 Page 1 of 23 PageID #: 1842
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`TABLE OF CONTENTS
`I. INTRODUCTION ...............................................................................................................1
`II. NATURE AND STAGE OF THE PROCEEDINGS ..........................................................1
`III. SUMMARY OF ARGUMENT ...........................................................................................3
`1. The Court should maintain a complete stay because the PTAB has
`instituted review on 26 of the 39 asserted claims and the
`completion of those proceedings will materially simplify validity,
`eligibility, and infringement issues across all four related patents. .............3
`IV. LEGAL STANDARD ..........................................................................................................4
`V. ARGUMENT .......................................................................................................................4
`A. The Stay Should be Maintained in its Entirety ........................................................4
`1. Maintaining the Stay Will Simplify the Issues for Trial, Even for
`the Non-Instituted Patents ............................................................................4
`a. The PTAB Review Proceedings Are Likely to Assist this
`Court in Deciding Invalidity and Infringement Issues Even
`for the Non-Instituted Claims ..........................................................7
`b. The Stay Should be Maintained in Full to Avoid
`Inconsistent Arguments from PayRange in the PTAB and
`this Court ..........................................................................................9
`2. The Early Stage of this Litigation Strongly Weighs in Favor of
`Maintaining the Stay ..................................................................................11
`3. Defendant Will Not Suffer Any Undue Prejudice from Maintaining
`the Stay.......................................................................................................12
`B. If the Court Partially Lifts the Stay, Alliance Intends to Immediately Re-
`File its Rule 12(b)(6) Motion as to the ’772 Patent, and Requests that the
`Court Decide the Motion on the Merits Before the Case Proceeds to
`Discovery ...............................................................................................................16
`1. The Single Asserted Claim of the ’772 Patent is Substantially
`Similar to Claims that the PTAB has Already Found Ineligible or
`“Reasonably Likely” to be Ineligible Under Section 101 ..........................17
`2. Deciding the Eligibility of the Single Asserted Claim of the ’772
`Patent at the Outset Will be Efficient for the Parties and the Court ..........18
`VI. CONCLUSION ..................................................................................................................19
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`TABLE OF AUTHORITIES
` Page(s)
`CASES
`454 Life Scis. Corp. v. Ion Torrent Sys., Inc.,
` C.A. No. 15-595-LPS, 2016 WL 6594083 (D. Del. Nov. 2016) .......................................... 9, 12
`
`Alloc, Inc. v. Unilin Decor N.V., C.A.,
`No. 03-253-GMS, 2003 WL 21640372 (D. Del. July 11, 2003) ................................................. 6
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017) ............................................................................................. 9, 11
`
`Bayer AG v. Biovail Corp.,
`279 F.3d 1340 (Fed. Cir. 2002) ................................................................................................. 11
`
`Bio-Rad Labs. Inc. v. 10X Genomics, Inc.,
`C.A. No. 18-1679-RGA, 2020 WL 2849989 (D. Del. Jun. 2, 2020) ......................................... 15
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
` No. 12-1107-GMS, 2014 WL 1369721 (D. Del. Apr. 7, 2014) ............................................... 12
`
`Boston Scientific Corp. v. Cook Group Inc.,
`C.A. No. 15-980, 2017 WL 11921775 (D. Del. Aug. 16, 2017) ............................................... 15
`
`Brit. Telecomms. PLC v. IAC/InterActiveCorp,
` C.A. No. 18-366-WCB, 2019 WL 4740156 (D. Del. Sept. 27, 2019) ......................... 4, 7, 9, 12
`
`Consumeron, LLC v. MapleBear Inc., C.A.,
`No. 21-01147-GBW, 2023 WL 3434002 (D. Del. May 12, 2023) ........................................... 13
`
`Data Engine Techs. LLC v. Google LLC,
`10 F.4th 1375 (Fed. Cir. 2021) .................................................................................................. 10
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`C.A. No. 17-871-LPS, 2019 WL 1276029 (D. Del. Mar. 20, 2019) ........................................... 4
`
`Ever Win Int’l Corp. v. Radioshack Corp.,
` No. 11-1104-GMS-CJB, 2012 WL 4801890 (D. Del. Oct. 9, 2012) ....................................... 14
`
`Evolutionary Intelligence, LLC v. Apple, Inc.,
`No. C 13-4201, 2014 WL 93954 (N.D. Cal. Jan. 9, 2014) ........................................................ 15
`
`Case 1:24-cv-00733-MN Document 45 Filed 11/25/25 Page 3 of 23 PageID #: 1844
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`First Am. Title Ins. Co. v. MacLaren LLC, C.,
`A. No. 10-363-GMS, 2012 WL 769601 (D. Del. Mar. 9, 2012) ............................................... 11
`
`Int’l Bus. Machs. Corp. v. Rakuten, Inc.,
`680 F. Supp. 3d 531 (D. Del. 2023) ............................................................................................ 6
`
`IOENGINE, LLC v. PayPal Holdings, Inc., C.A.,
`No. 1:18-cv-452-WCB, 2019 WL 3943058 (D. Del. Aug. 21, 2019) ....................................... 16
`
`KioSoft Techs., LLC v. PayRange Inc.,
`PTAB-PGR2023-00042, Paper 6 at 4–93........................................................................ 2, 14, 18
`
`LG Elecs., Inc. v. Toshiba Samsung Storage Tech. Korea Corp.,
`C.A. No. 12-1063-LPS-CJB, 2015 WL 8674901 (D. Del. Dec. 11, 2015) ................................. 6
`
`Microsurgical Tech., Inc. v. New World Med., Inc.,
`C.A. No. 20-754-MN, D.I. 76 (D. Del. Aug. 16, 2021) ........................................................ 5, 13
`
`MQ Gaming, LLC v. LEGO Sys. Inc.,
`No. 19-905-MN, Oral Order (D. Del. Mar. 17, 2021) ........................................................... 5, 13
`
`Neste Oil Oyj v. Dynamic Fuels, LLC,
`C.A. No. 12-662-GMS, 2013 WL 424754 (D. Del. Jan. 31, 2013)........................................... 14
`
`Nuance Comms., Inc. v. MModal LLC,
`C.A. No. 17-1484-MN, D.I. 226, Tr. at 27:1–28:4 (D. Del. Apr. 11, 2019) ......................... 5, 13
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ................................................................................................... 9
`
`Princeton Digital Image Corp. v. Konami Digital Ent. Inc.,
` C.A. No. 12-1461-LPS-CJB, 2014 WL 3819458 (D. Del. Jan. 15, 2014) ......................... 11, 13
`
`SunPower Corp. v. PanelClaw, Inc.,
` C.A. No. 12-1633-GMS, 2014 WL 12774919 (D. Del. May 16, 2014)................................... 11
`
`Quest Diagnostics Investments LLC v. Lab. Corp. of Am. Holdings,
`C.A. No. 18-1436-MN, D.I. 166 (D. Del. Sept. 4, 2020) ...................................................... 5, 13
`
`Statutes
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`35 U.S.C. § 101 ............................................................................................................. 2, 7, 8, 9, 10
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`35 U.S.C. § 321(c) .............................................................................................................. 7, 12, 16
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`Case 1:24-cv-00733-MN Document 45 Filed 11/25/25 Page 4 of 23 PageID #: 1845
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`I. INTRODUCTION
` Plaintiff Alliance Laundry Systems LLC (“Alliance”) respectfully submits this opposition
`to Defendant PayRange Inc.’s (“PayRange”) motion to partially lift the stay of this case as to the
`‘772 and ’608 Patents. See D.I. 40-43. The stay should be maintained in full: the PGRs of the
`’920 and ’423 Patents are likely to greatly simplify the issues for trial even for the non-instituted
`’772 and ’608 Patents, this case is at an early stage, and there is no undue prejudice to PayRange
`from a stay. Accordingly, PayRange’s motion should be denied.
`But if the Court elects to grant PayRange’s motion and partially lift the stay, Alliance
`intends to immediately re-file its Rule 12(b)(6) motion as to the sole asserted claim of the ’772
`Patent. A decision on the eligibility of this single claim at the pleadings stage will both promote
`judicial efficiency and avoid the risk of conducting discovery on a likely invalid claim.
`II. NATURE AND STAGE OF THE PROCEEDINGS
`Alliance filed this action in response to repeated (and baseless) threats of infringement
`from PayRange, culminating in a June 19, 2024 email, stating that PayRange will be forced “to
`address this matter through litigation.” See Compl., D.I. 1 at ¶ 65; cf. D.I. 41 at 1. Alliance filed
`the Complaint the next day, seeking declaratory judgment that it does not infringe the only three
`patents PayRange had accused it of infringing: the ’772 Patent, the ’920 Patent, and the ’423
`Patent.1 See D.I. 1.
`PayRange filed its Answer and Counterclaims on August 23, 2024, alleging infringement
`of the same three patents and adding allegations of infringement of the ’608 Patent2 (collectively,
`with the ’772 Patent, the ’920 Patent, and the ’423 Patent, the “Asserted Patents”). See D.I. 11; see
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`1 U.S. Patent Nos. 11,481,772 (“the ’772 Patent”), 11,966,920 (“the ’920 Patent”), and
`11,972,423 (“the ’423 Patent”).
`2 U.S. Patent No. 10,891,608 (“the ’608 Patent”).
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`also Amended Answer and Counterclaims, D.I. 18 (filed October 4, 2024). On October 25, 2024,
`Alliance filed a partial motion to dismiss PayRange’s counterclaims for failure to state a claim
`because the claims of the ’772 Patent, the ’920 Patent, and the ’423 Patent are invalid under 35
`U.S.C. § 101 and PayRange is collaterally estopped from re -litigating eligibility issues already
`resolved by the PTAB in prior KioSoft proceedings. See D.I. 22.
`Following PayRange’s amended counterclaims , Alliance prepared and filed petitions for
`post-grant review (PGR) and inter partes review (IPR) of the Asserted Patents.3 On August 25,
`2025, the Patent Trial and Appeal Board (“PTAB”) instituted post -grant review of all claims of
`the ’920 and ’423 Patents, finding it “more likely than not that at least one challenged claim” of
`each patent is unpatentable. See, e.g., D.I. 33, Ex. A at 55; Ex. B at 43. Alliance filed a notice on
`the following day, notifying the Court of the PGR institution decisions. D.I. 33.
`On September 9, 2025, in view of the PGR institution decisions, th is Court denied
`Alliance’s partial motion to dismiss “without prejudice to renew at an appropriate time.” D.I. 36
`at 3. The Court recognized that “Plaintiff’s § 101 arguments regarding the ’423 Patent and ’920
`Patent – those presented in the [partial motion to dismiss] – are within the scope of the PTAB’s
`post-grant review, are addressed in the institution decisions, and will be further evaluated by the
`PTAB prior to the issuance of the final written decisions.” Id. at 3 n.3. The parties subsequently
`stipulated to a stay until the institution decisions in the two outstanding proceedings: the ’772 IPR
`and the ’608 IPR. D.I. 38. The Court entered that stipulation and “FURTHER ORDERED that the
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`3 Alliance Laundry Systems, LLC v. PayRange LLC, PGR2025-00027 (PTAB Jan. 17, 2025) (“the
`’920 PGR”); Alliance Laundry Systems, LLC v. PayRange LLC, PGR2025-00028 (PTAB Jan. 17,
`2025) (“the ’423 PGR”) (collectively, “PTAB Review Proceedings”); see also Alliance Laundry
`Systems, LLC v. PayRange LLC , IPR2025-00573 (PTAB Feb. 3, 2025) (“the ’772 IPR”); and
`Alliance Laundry Systems, LLC v. PayRange LLC , IPR2025-00950 (PTAB Apr. 29, 2025) (“the
`’608 IPR”).
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`stay will not automatically lift. The parties must request for it to be lifted.” D.I. 39 at 2.
`On September 19, 2025, then-Acting Director Stewart discretionarily denied institution of
`the ’608 IPR based on a new process for deciding discretionary issues at the PTAB, which was
`implemented only a few months prior. See D.I. 42, Ex. B. The denial was unrelated to the merits
`but, instead, was based primarily on prior challenges to the same patent brought by other
`petitioners with no relation to Alliance. Id.
`On October 1, 2025, the PTAB denied institution of the ’772 IPR . D.I. 42, Ex. A . The
`PTAB denied institution after adopting PayRange’s claim interpretation argument which,
`importantly, was different from the claim interpretation it has applied in this case to accuse
`Alliance of infringement. Specifically, Alliance ’s IPR petition relied upon U.S. Patent No.
`10,210,501 (“Low”) which disclosed a payment button as satisfying—alone or in combination
`with U.S. Patent No. 8,255,323 (“Casey”)—Claim 11’s requirement of “an affordance that when
`slid, indicates the initiation of the transaction.” See id. at 21. PayRange contended that “Low’s
`payment button does not indicate initiation of a transaction but instead triggers a payment for an
`already initiated transaction.” Id . at 22. The PTAB agreed with PayRange, finding that “Low’s
`payment button is selected after the initiation of the transaction,” so the Petition failed to show a
`reasonable likelihood that Claim 11 is unpatentable. Id. at 23.
`III. SUMMARY OF ARGUMENT
`1. The Court should maintain a complete stay because the PTAB has instituted review
`on 26 of the 39 asserted claims and the completion of those proceedings will materially simplify
`validity, eligibility, and infringement issues across all four related patents.
`2. This case is in its early stages, so maintaining the stay promotes judicial economy.
`Moreover, proceeding on disjointed discovery imposes a significant risk of duplication of efforts
`and inconsistent results.
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`3. PayRange will not be unduly prejudiced by the stay. Alliance acted diligently in
`filing its PTAB petitions and requesting a stay with this Court and there will be no competitive
`harm to PayRange from maintaining the stay.
`4. If the Court partially lifts the stay, Alliance intends to immediately re-file its Rule
`12(b)(6) motion to dismiss the only asserted claim of the ’772 Patent . This claim is substantially
`similar to claims the PTAB has already found ineligible or likely to be ineligible, and it would be
`most appropriate for this Court to decide the renewed motion before the parties and this Court
`proceed to discovery.
`IV. LEGAL STANDARD
`“Courts typically rely on three factors in determining whether a stay is appropriate: (1)
`whether a stay will simplify the issues for trial, (2) whether discovery is complete and a trial date
`has been set, and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage
`to the non-moving party.” Ethicon LLC v. Intuitive Surgical, Inc., C.A. No. 17-871-LPS, 2019 WL
`1276029, at *1 (D. Del. Mar. 20, 2019) (granting stay). As Courts in this District have recognized,
`“after the PTAB has ins tituted review proceedings, the parallel district court litigation ordinarily
`should be stayed.” Brit. Telecomms. PLC v. IAC/InterActiveCorp, C.A. No. 18-366-WCB, 2019
`WL 4740156, at *3 (D. Del. Sept. 27, 2019) (collecting cases).
`V. ARGUMENT
`A. The Stay Should be Maintained in its Entirety
`1. Maintaining the Stay Will Simplify the Issues for Trial, Even for the
`Non-Instituted Patents
`“The most important factor bearing on whether to grant a stay is whether the stay is likely
`to simplify the issues at trial.” See Brit. Telecomms, 2019 WL 4740156, at *7. Here, the PTAB’s
`institution decisions found that 26 of the 39 asserted claims —the vast majority of the claims
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`asserted against Alliance—are likely invalid. See D.I. 33, Ex. A at 2 (“[T]he information presented
`in the Petition demonstrates it is more likely than not that at least one challenged claim is
`unpatentable.”); D.I. 33, Ex. B , at 2 (same). The instituted PGRs are expected to conclude by
`August 2026, and the PTAB’s final written decision in those proceedings will resolve the patent
`eligibility and validity of all claims of the ’920 Patent and the ’423 Patent, and will impact the lone
`claim of the ’772 Patent and the claims of the ’608 Patent. See D.I. 33, Ex. A; D.I. 33, Ex. B. The
`PTAB Review Proceedings will substantially simplify the issues in this case, which favors
`maintaining the complete stay.
`PayRange attempts to focus on the asserted patents as a whole, arguing that “at least half
`of the asserted patents will proceed in this action.” D.I. 41 at 1 (emphasis added). But that ignores
`the reality that nearly two thirds of the asserted claims will be evaluated by the PTAB. See D.I.
`18, Counterclaims, ¶¶ 32, 48, 61, 76. And only a single claim of the ’772 Patent is asserted.
` 4 Id.
`at ¶ 61. Because PTAB review of even less than all asserted claims is still likely to simplify the
`issues for trial, this Court routinely grants complete stays in cases where not all claims are subject
`to instituted IPRs. See, e.g., Nuance Comms., Inc. v. MModal LLC , C.A. No. 17-1484-MN, D.I.
`226, Tr. at 27:1-28:4 (D. Del. Apr. 11, 2019) (granting motion to stay where IPR was instituted on
`3 of 4 asserted patents and finding simplification factor favored stay); MQ Gaming, LLC et al. v.
`LEGO Sys. Inc., et al., No. 19-905-MN, Oral Order (D. Del. Mar. 17, 2021) (granting motion to
`stay where instituted IPRs covered 32 of 40 asserted claims); Quest Diagnostics Investments LLC
`v. Lab. Corp. of Am., Holdings, C.A. No. 18-1436-MN, D.I. 166 (D. Del. Sept. 4, 2020) (granting
`stay where IPR was instituted on 3 of 4 asserted patents); Microsurgical Tech., Inc. v. New World
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`4 Because PayRange previously disclaimed claims 1–6, 8–10, and 12–20 of the ’772 Patent, only
`two claims (7 and 11) remain. See D.I. 1, Ex. 5. PayRange asserts only Claim 11 against Alliance
`here. See D.I. 18, Counterclaims, ¶ 61.
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`Med., Inc., No. C.A. 20-754-MN, D.I. 76 (D. Del. Aug. 16, 2021) (granting stay where IPR was
`instituted on 5 of 6 asserted patents).
`PayRange cites to two cases where “Courts in this District have entered partial stays that
`permit discovery and case progress on the patents not subject to PTAB review.” D.I. 41 at 7 (citing
`Int’l Bus. Machs. Corp. v. Rakuten, Inc., 680 F. Supp. 3d 531 (D. Del. 2023) and LG Elecs., Inc.
`v. Toshiba Samsung Storage Tech. Korea Corp., C.A. No. 12-1063-LPS-CJB, 2015 WL 8674901
`(D. Del. Dec. 11, 2015)). But unlike here, in both of those cases the stayed patents had no relation
`to the patents that were to proceed in the case. See Int’l Bus. Machs. Corp., 680 F. Supp. 3d at
`536–37 (stayed ’960 and ’968 patents unrelated to non- stayed ’849 and ’861 patents); LG Elecs.,
`2015 WL 8674901, at *1–2 (stayed ’162 patent unrelated to non- stayed ’126 patent). Here, the
`’772 Patent and ’608 Patent are part of the same family as the ’920 and ’423 Patents. See, e.g.,
`D.I. 41 at 1 (“The asserted patents share a common specification, name the same inventor, and
`there is substantial similarity between (on one hand) the claims of the ’772 patent and (on the other
`hand) the claims of the ’920 and ’423 patents.”) . The close relation of all four patents supports a
`complete stay. See, e.g., Alloc, Inc. v. Unilin Decor N.V., C.A. No. 03- 253-GMS, 2003 WL
`21640372, at *2–3 (D. Del. July 11, 2003) (stay issued where “there is a sufficient correlation
`among all of the patents,” even though the asserted patent was not undergoing review).
`PayRange goes so far as to offer “to provide infringement contentions for the ’920 and
`’423 patents based on discovery taken with respect to the ’772 patent to ensure Alliance has
`complete notice of the infringement allegations.” D.I. 41 at 7–8. While Pa yRange argues this
`supports the lifting the stay, it actually demonstrates why the complete stay should remain in place.
`By submitting infringement contentions for the two patents that are currently subject to PTAB
`review, the parties will expend unnecess ary resources on discovery related to those patents ,
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`effectively operating as if the ’920 and ’423 Patents are not stayed at all . The risk of duplication
`of efforts and inconsistent results far outweighs any perceived benefit of proceeding on disjointed
`discovery over the next few months. See Brit. Telecomms, 2019 WL 4740156, at *8 (“[A]llowing
`the PTO to adjudicate the validity of the claims before it in the IPR proceeding reduces what
`otherwise could be duplication of effort and possibly inconsistent results between the
`administrative agency and this Court.”).
`a. The PTAB Review Proceedings Are Likely to Assist this Court
`in Deciding Invalidity and Infringement Issues Even for the
`Non-Instituted Claims
`Not only will the PTAB Review Proceedings directly decide issues as to 26 of the 39
`asserted claims, but these decisions are also likely to have a direct impact on the sole asserted
`claim of the ’772 Patent.
`The ’772 Patent issued in October 2022, so by the time this dispute arose in 2024, Alliance
`was time-barred from challenging its Section 101 eligibility in a PGR proceeding. See 35 U.S.C.
`§ 321(c). However, Alliance maintains that Claim 11 is ineligible under 35 U.S.C. § 101 for at
`least the reasons set forth in its partial motion to dismiss. See, e.g., D.I. 21, 22.
`PayRange argues throughout its brief that the asserted claim of the ’772 Patent is similar
`to the claims of the ’920 and ’423 Patents. See D.I. 41 at 1 (“there is substantial similarity between
`(on one hand) the claims of the ’772 patent and (on the other hand) the claims of the ’920 and ’423
`patents”); id. at 7 (“[t]he claims of the ’772 patent (which was not instituted) and those of the ’920
`patent (which was instituted) are similar”). Alliance agrees. But that weighs strongly against
`partially lifting the stay: the Board’s PGR decisions as to the ’920 and ’423 Patents —which will
`include decisions as to Section 101 eligibility—are likely to have a substantial bearing on the
`“similar” claim of the ’772 Patent.
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`Comparing Claims 1 and 11 of the ’ 423 and ’772 Patents shows they are nearly identical
`to one another. See Declaration of Sarah Waidelich (“Waidelich Decl.”), Ex. A. The Board
`determined “that the limitations of claim 1 [of the ’423 Patent], viewed individually and as an
`ordered combination, merely use well -understood, routine, and conventional computer
`components and functionality to identify a merchant and enable completion of a purchase from the
`merchant, and that claim 1 does not provide an inventive concept.” D.I. 33, Ex. B at 27. As the
`claim comparison attached as Exhibit A shows, the lone difference between Claim 1 of each of the
`’772 and ’423 patents is that Claim 1 of the ’772 Patent includes the following additional limitation
`not present in Claim 1 of the ’423 Patent: “trigger payment by the mobile payment application for
`a transaction initiated by the user of the mobile device with the available payment accepting unit
`of the one or more payment accepting units .” See Waidelich Decl., Ex. A. T his additional
`limitation does not transform the ineligible abstract idea of Claim 1 of the ’423 Patent into a patent
`eligible claim, as it likewise recites well- understood, routine, and conventional computer
`components and functionality to enable completion of a purchase from the merchant. See D.I. 33,
`Ex. B at 27.
`Nor is there any material difference between Claim 11 of these two patents. The only
`difference is that Claim 11 of the ’772 Patent recites “a prepared balance,” while Claim 11 of the
`’423 Patent recites “a prepaid balance.” See Waidelich Decl., Ex. A. Alliance firmly maintains
`that this single word will not distinguish the eligibility of Claim 11 of the ’772 Patent from Claim
`11 of the ’423 Patent. As such, should the Board affirm its finding in the institution decisions that
`the claims of the ’920 and ’423 Patents are ineligible under Section 101 (as it previously found in
`a final written decision for the ’614 parent patent , see infra § B.1), this Court can (and should)
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`revisit the eligibility of Claim 11 of the ’772 Patent before the parties and the Court expend any
`resources relating to it.
`In addition, the likelihood of issue simplification is not limited to Section 101 issues.
`Because all four patents in this case are related, claim construction issues at the PTAB are likely
`to bear on the ’772 and ’608 Patents as well. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334
`F.3d 1314, 1334 (Fed. Cir. 2003) (noting that the same construed meaning should generally attach
`to the same claim term in related patents). And statements PayRange may make at the PTAB in an
`effort to preserve the validity of its claims can, and should, be considered by this Court in
`subsequent claim construction determinations. See, e.g. , Aylus Networks, Inc. v. Apple Inc., 856
`F.3d 1353, 1361 (Fed. Cir. 2017) (“[S]tatements made by a patent owner during an IPR proceeding
`can be considered during claim construction and relied upon to support a finding of prosecution
`disclaimer.”); 454 Life Scis. Corp. v. Ion Torrent Sys., Inc., C.A. No. 15- 595-LPS, 2016 WL
`6594083, at *3 (D. Del. Nov. 2016) (“[t]he creation of additional prosecution history . . . will
`simplify the issues left to be litigated in this case”) (citations omitted).
`The PTAB’s review of the similar ’920 and ’423 Patents is likely to simplify issues for this
`Court for the ’772 and ’608 Patents. Maintaining the stay will ensure that neither the Court nor
`the parties expend additional resources addressing potentially ineligible or invalid claims. See, e.g.,
`Brit. Telecomms., 2019 WL 4740156, at *2 (“A stay is particularly justified when the outcome of
`a PTO proceeding is likely to assist the court in determining patent validity or eliminate the need
`to try infringement issues.”) (quotation omitted). PayRange’s motion should be denied.
`b. The Stay Should be Maintained in Full to Avoid Inconsistent
`Arguments from PayRange in the PTAB and this Court
`Another compelling reason for maintaining the stay in full is to minimize the serious risk
`of PayRange taking inconsistent positions in the PTAB (for validity purposes) and in this Court
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`(for infringement purposes). This risk is not theoretical; it has already occurred. For example, in
`opposing IPR of the ’772 Patent, PayRange argued that the “payment button” of the Low reference
`does not meet the limitation of Claim 11 of the ’772 Patent reciting “an affordance that…indicates
`initiation of the transaction.” See D.I. 42, Ex. A at 22. But in this Court, PayRange identified that
`exact feature on Alliance’s apps as meeting this limitation. See D.I. 18, Ex. L at 13. Because
`claims cannot be twisted “like a nose of wax, in one way to avoid [ invalidity] and another to find
`infringement,” it will be valuable and efficient for the parties and this Court to have the full record
`of the PTAB Review Proceedings before this case proceeds as to the ’772 Patent. See, e.g., Data
`Engine Techs. LLC v. Google LLC , 10 F.4th 1375, 1381 (Fed. Cir. 2021) (rejecting patentee’s
`claim construction argument that sought a limiting construction for Section 101 purposes and a
`broad construction for infringement purposes) (internal quotations and citations omitted).
`Additionally, PayRange has advanced a number of claim construction arguments in its pre-
`institution briefing as to the ’920 and ’423 Patents that the PTAB has preliminarily rejected, but
`will be resolved in the final written decisions. See D.I. 33, Ex. A at 40 (“[W]e do not agree with
`Patent Owner’s claim construction that limitations [1.2] –[1.3] require the mobile device to
`determine the one or more payment accepting units are ‘available’ per claim 1”); D.I. 33, Ex. B at
`33 (same); D.I. 33, Ex. A at 45 (“ [W]e do not agree with Patent Owner’s claim construction of
`limitations [1.7]–[1.8] whereby establishing the wireless communication path must occur after the
`user selects an available payment selecting unit”) (original emphasis); D.I. 33, Ex. B at 39 (same);
`D.I. 33, Ex. A at 50 (“[W]e do not agree with Patent Owner’s claim construction requiring the
`‘visual representation’ of limitation [1.10] to be displayed after the user selects an available
`payment accepting unit”) (original emphasis); id. at 53 (“[W]e do not agree with Patent Owner’s
`claim construction requiring the balance indication of limitation [1.11] to be displayed after the
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`user selects an available payment accepting unit”) (original emphasis). A stay will thus help ensure
`that the asserted claims “are not argued one way [before the PTAB] in order to maintain their
`patentability and in a different way” here against Alliance. Aylus, 856 F.3d at 1360.
`PayRange’s proposal to defer “claim construction and other substantive
`proceedings…until after the PTAB’s record closes” fails to adequately mitigate these risks. See
`D.I. 41 at 8. Fact discovery is not conducted in a vacuum ; it is dictated by the parties’
`interpretations of the claims. PayRange’s proposal raises the real risk of duplicative discovery
`following the PTAB’s final written decisions and any appeals. See Bayer AG v. Biovail Corp., 279
`F.3d 1340, 1349 (Fed. Cir. 2002) (“After construing the claims, the district court may assess the
`need for further proceedings or discovery.”) . This risk outweighs any perceived benefits of
`conducting discovery now.
`Accordingly, the simplification of the issues in this case offered by the PTAB Review
`Proceedings weighs strongly in favor of maintaining a complete stay.
`2. The Early Stage of this Litigation Strongly Weighs in Favor of
`Maintaining the Stay
`This case is in the early procedural stages, which also supports maintaining the stay. Courts
`routinely consider factors such as “whether discovery is complete and whether a trial date has been
`set.” SunPower Corp. v. PanelClaw, Inc., C.A. No. 12-1633-GMS, 2014 WL 12774919, at *3 (D.
`Del. May 16, 2014) (quoting First Am. Title Ins. Co. v. MacLaren LLC , C.A. No. 10-363-GMS,
`2012 WL 769601, at *4 (D. Del. Mar. 9, 2012)). Here, discovery has not begun. The parties have
`not held a Rule 26(f) conference and neither initial disclosures nor discovery have been served.
`No scheduling order has been proposed or entered and no trial date is set. “Granting such a stay
`early in a case can be said to advance judicial