Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 1 of 18 PageID #: 2411
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`INTELLECTUAL VENTURES II LLC,
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`Plaintiff,
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`
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`Civil Action No. 2:16-cv-00980-JRG
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`JURY TRIAL DEMANDED
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`
`FEDEX CORP., FEDERAL EXPRESS
`CORP., FEDEX GROUND PACKAGE
`SYSTEM, INC., FEDEX FREIGHT, INC.,
`FEDEX CUSTOM CRITICAL, INC.,
`FEDEX OFFICE AND PRINT SERVICES,
`INC., and GENCO DISTRIBUTION
`SYSTEM, INC.,
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`
`v.
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`Defendants.
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`DEFENDANTS’ MOTION TO STAY PENDING INTER PARTES REVIEW
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`Exhibit 2113 Page 1
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`IV Exhibit 2113
`FedEx v. IV
`Case IPR2017-02043
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`

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`Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 2 of 18 PageID #: 2412
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`BACKGROUND ................................................................................................................ 1
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`
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`I.
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`II.
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`III.
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`LEGAL STANDARD ......................................................................................................... 5
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`IV. ARGUMENT ...................................................................................................................... 6
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`A.
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`B.
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`C.
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`The IPR Proceedings Will Simplify The Issues For The Court And Parties .......... 6
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`Intellectual Ventures Will Not Suffer Undue Prejudice ......................................... 9
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`The Case Is In Its Early Stages ............................................................................. 11
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`CONCLUSION ................................................................................................................. 12
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`V.
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`
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`i
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`Exhibit 2113 Page 2
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`TABLE OF AUTHORITIES
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`
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`CASES
`
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)............................................................................................7
`
`Armor All/STP Prods. Co. v. Aerospace Commc’ns Hldgs. Co., Ltd.,
`No. 6:15-cv-781, 2016 WL 6397269 (E.D. Tex. Oct. 28, 2016) .............................6, 11, 12
`
`Cellular Commc’ns Equip., LLC v. Samsung Elecs. Co., Ltd.,
`No. 6:14-cv-759, 2015 WL 11143485 (E.D. Tex. Dec. 16, 2015) ................................3, 7, 10
`
`Electric Power Group, LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)............................................................................................8
`
`Intellectual Ventures II LLC v. BITCO General Ins. Corp.,
`No. 6:15-cv-59, 2016 WL 4394485 (E.D. Tex. May 12, 2016) ....................................7, 10
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015)........................................................................................ 5-6
`
`NFC Tech. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ............................ passim
`
`Norman IP Hldgs., LLC v. TP-Link Techs., Co.,
`No. 6:13-cv-384, 2014 WL 5035718 (E.D. Tex. Oct. 8, 2014) ...........................................9
`
`Parthenon Unified Memory Architecture LLC v. HTC Corp.,
`No. 2:14-cv-00690, 2016 WL 3365855 (E.D. Tex. June 17, 2016) .................................11
`
`Personal Audio LLC v. Google, Inc.,
`No. 1:15-cv-350, 2015 WL 12915558 (E.D. Tex. Nov. 3, 2015) ..................................7, 10
`
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 734 (Fed. Cir. 2016)..............................................................................................5
`
`Security People, Inc. v. Ojmar US, LLC,
`No. 2:14-cv-04968, 2015 WL 3453780 (N.D. Cal. May 29, 2015) ....................................9
`
`VirtualAgility, Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014).................................................................................... 10-11
`
`
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`
`
`
`
`ii
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`Exhibit 2113 Page 3
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`STATUTES
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`35 U.S.C. § 101 ..........................................................................................................................8
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`35 U.S.C. § 112 ..........................................................................................................................8
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`35 U.S.C. § 299 ..........................................................................................................................5
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`35 U.S.C. § 315 ........................................................................................................................12
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`35 U.S.C. § 316 ..........................................................................................................................4
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`
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`LOCAL RULES
`
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`Local Patent Rule P.R. 3-6 .........................................................................................................2
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`
`
`
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`iii
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`Exhibit 2113 Page 4
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`I.
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`INTRODUCTION
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`This sprawling case—with five unrelated asserted patents, 51 asserted claims, 24 accused
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`business processes and systems, and seven distinct defendants—is on track to become greatly
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`simplified in its early stages. FedEx filed six petitions for inter partes review (“IPR”) in January
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`and February of 2017. Trials have already been instituted for four of the five asserted patents.
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`For every asserted patent claim that is not yet part of an institution decision, FedEx has already
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`filed a follow-on IPR petition specifically focused on those remaining claims. All of this has
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`been accomplished before the end of claim construction briefing.
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`Because the parties will be litigating issues of patentability at the Patent Trial and Appeal
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`Board (“PTAB”) for the next 12-18 months, judicial economy strongly favors a stay pending the
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`results of the IPRs. During this time, the parties will continue to take positions at the PTAB on
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`the merits of claim construction and patentability. Intellectual Ventures has the opportunity to
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`seek claim amendments or disclaim claims for at least four of its asserted patents, and for all five
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`asserted patents if FedEx’s follow-on petition for the sole non-instituted patent is granted. Given
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`the early stage of the present litigation, a stay will ensure that chaos between this litigation and
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`the PTAB proceedings is avoided. The Court has not yet decided the merits of any substantive
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`issue in the case—claim construction, validity, infringement, or damages—and thus all of those
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`complex determinations can await the outcome of the PTAB proceedings without the risk of any
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`conflicting results or wasted effort. If the PTAB proceedings leave any patent claims standing,
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`the Court’s and parties’ resources can be focused only on those claims, not on those cancelled by
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`the PTAB.
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`II.
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`BACKGROUND
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`Intellectual Ventures filed its complaint in this case on August 31, 2016, having waited
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`more than seven years after acquiring the first of the asserted patents. The complaint alleges that
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`
`
`1
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`Exhibit 2113 Page 5
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`Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 6 of 18 PageID #: 2416
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`seven different FedEx companies all infringe U.S. Patent Nos. 6,633,900 (the “’900 Patent”),
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`6,909,356 (the “’356 Patent”), 7,199,715 (the “’715 Patent”), 8,494,581 (the “’581 Patent”), and
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`9,047,586 (the “’586 Patent”), including a total of 164 claims. These patents each relate to
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`different business processes and are allegedly infringed by 24 accused programs and systems. In
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`its infringement contentions,1 Intellectual Ventures has so far asserted nearly a third of the
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`claims, 51, including: claim 1 of the ’900 Patent; claims 1, 3-5, 7, 11-14, and 17 of the ’356
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`Patent; claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and 25 of the ’715 Patent; claims 1-14, 16-
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`20, and 24 of the ’581 Patent; and claims 7, 8, 12, 13, 16, 18, and 19 of the ’586 Patent.
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`The 24 accused FedEx business processes, which largely do not overlap among the
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`asserted patents, include the following programs and systems:
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`•
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`’900 Patent: Customer Operations Service Master On-line System (“COSMOS”),
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`Digitally Assisted Dispatch Service (“DADS”), Dispatch Workstation (“DWS”),
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`Route Optimization and Decision Support (“ROADS”), FedEx PowerPad,
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`Motorola Inc./Zebra Technologies MC9500, Motorola Inc./Zebra Technologies
`
`MC9500-K
`
`•
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`’356 Patent: SenseAware, SenseAware 2000, SenseAware PT300D,
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`ShipmentWatch, and SenseAware web-based application
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`•
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`’715 Patent: GENCO’s Warehouse Management and Reverse Logistics Systems,
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`R-Log, Apix2, Direct ConneX (“DCX”)
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`1 Intellectual Ventures later served amended infringement contentions on April 24, 2017 and July
`28, 2017 with improper revisions and additions that required leave from the Court. See Local
`Patent Rule P.R. 3-6.
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`
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`2
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`Exhibit 2113 Page 6
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`

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`•
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`’581 Patent: Motorola Inc./Zebra Technologies MC9500, Motorola Inc./Zebra
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`Technologies MC9500-K, DWS, Shipment Event Processing (“SEP”), and
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`ROADS
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`•
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`’586 Patent: FedEx Ship Manager, FedEx Ship Manager Server, Global Ship
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`Manager, FedEx Ship Manager web-based application, FedEx Ship Manager Lite
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`web-based application, FedEx Mobile applications for Apple, and FedEx Mobile
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`applications Android
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`In total, FedEx has filed 10 IPR petitions against the asserted patents. Of these, four are
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`awaiting decision, two have been denied, and four have been instituted for some or all asserted
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`claims (for the asserted ’586, ’715, ’900, and ’581 Patents).2 Because the asserted patents are
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`directed to rudimentary and well-known business processes—such as sending documents,
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`controlling and tracking inventory, distributing work assignments, and managing personnel—
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`there is an abundance of invalidating prior art making clear that these patents should never have
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`issued. A summary of FedEx’s IPR petitions is provided below:
`
`•
`
`’900 Patent
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`o IPR2017-00741, filed January 24, 2017, instituted for claim 1
`o IPR2017-00743, filed January 24, 2017, not instituted for claim 1
`’356 Patent
`
`•
`
`o IPR2017-00750, filed January 23, 2017, not instituted, but FedEx’s
`request for rehearing is pending
`
`
`2 During the parties’ meet and confer on August 30, 2017, Intellectual Ventures outright rejected
`a “partial stay” for only the asserted patents with institution decisions, something FedEx
`proposed given that the Court has used this approach before. See Cellular Commc’ns Equip.,
`LLC v. Samsung Elecs. Co., Ltd., No. 6:14-cv-759, 2015 WL 11143485, at *3-*4 (E.D. Tex.
`Dec. 16, 2015). this suggestion.
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`
`
`3
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`Exhibit 2113 Page 7
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`o IPR2017-02028, filed August 31, 2017, awaiting decision for all asserted
`claims
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`•
`
`’715 Patent
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`o IPR2017-00787, filed January 27, 2017, instituted for claims 1, 2, 11, and
`12
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`o IPR2017-02039, filed August 31, 2017, awaiting decision for all
`remaining asserted claims (i.e., claims 4, 5, 7, 9, 14, 15, 17, 19, 22, 23, and
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`25
`
`•
`
`’581 Patent
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`o IPR2017-00729, filed January 19, 2017, instituted for claims 1-17
`o IPR2017-02030, filed August 31, 2017, awaiting decision for all
`remaining asserted claims (i.e., claims 18-20 and 24)
`
`•
`
`’586 Patent
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`o IPR2017-00859, filed February 7, 2017, instituted for claims 7, 8, 12, and
`13
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`o IPR2017-02043, filed August 31, 2017, awaiting decision for all
`remaining asserted claims (i.e., claims 16, 18, and 19)
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`In view of these IPRs, all 51 asserted claims from all five asserted patents are the subject
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`of either an instituted IPR trial or a pending IPR petition.3 Under 35 U.S.C. § 316(a)(11), final
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`written decisions in the four instituted IPRs should issue no later than August 10, 2018. Final
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`3 Even the instituted IPRs alone raise validity issues regarding most of the asserted claims in
`light of the overlap in claim language between asserted claims in the instituted IPRs and the
`asserted claims in the IPRs awaiting decision on institution.
`4
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`Exhibit 2113 Page 8
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`written decisions in the four pending IPRs should issue within one year of institution in each of
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`those proceedings.
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`In the present litigation, the great majority of activities—including resolution of every
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`substantive issue—lies ahead. Claim construction briefing is ongoing and the Markman hearing
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`is almost two months away, October 27, 2017. More than three months of fact discovery remain
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`before the cutoff of December 6, 2017. Dkt. 54 at 3. That will include all depositions of fact
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`witnesses, since none have yet occurred or been noticed. Dispositive and Daubert motions have
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`not been filed and are not due until next year, on January 29, 2018. Id. at 2-3. Trial is currently
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`scheduled for May 7, 2018.4 Id. at 1.
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`Also relevant to this motion is Intellectual Ventures’ status as a non-practicing entity.
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`Intellectual Ventures does not compete with any of the FedEx defendants in any area of business.
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`Intellectual Ventures has not, and could not reasonably have, sought a preliminary injunction
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`against FedEx. Nor does Intellectual Ventures seek a permanent injunction. See Dkt. 1.
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`III. LEGAL STANDARD
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`In creating IPR and other forms of post-grant validity challenges, “Congress intended
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`these programs to provide ‘quick and cost effective alternatives’ to litigation in the courts. PPC
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`Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 740 (Fed. Cir. 2016)
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`(quoting H.R. Rep. No. 112-98, pt. 1, at 48 (2011)). The Federal Circuit has thus recognized
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`“Congress’s purpose in creating IPR as part of ‘a more efficient and streamlined patent system
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`that will improve patent quality and limit unnecessary and counterproductive litigation costs.’”
`
`
`4 Given the distinct operations of each FedEx defendant and the lack of overlap in Intellectual
`Ventures’ infringement contentions, FedEx intends to move to sever the case into multiple trials
`in accordance with 35 U.S.C. § 299. That is another issue best addressed after the IPR
`proceedings are complete.
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`
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`5
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`Exhibit 2113 Page 9
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`

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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1308 (Fed. Cir. 2015) (quoting H.R. Rep.
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`No. 112-98, pt. 1, at 40 (2011)).
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`Courts have the inherent power to manage their dockets by staying a case pending the
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`conclusion of IPR proceedings. NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058, 2015 WL
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`1069111, at *1 (E.D. Tex. Mar. 11, 2015). In considering whether to grant a stay pending IPR,
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`courts typically consider three factors: (1) “(1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay
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`will likely result in simplifying the case before the court.” Id. at *2. “A stay pending an
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`administrative proceeding is not automatic, but rather it is based on the circumstances of the
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`individual case.” Armor All/STP Prods. Co. v. Aerospace Commc’ns Hldgs. Co., Ltd., No. 6:15-
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`cv-781, 2016 WL 6397269, at *2 (E.D. Tex. Oct. 28, 2016).
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`IV. ARGUMENT
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`
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`Because the pending IPR proceedings will simplify, or altogether eliminate, the issues for
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`the Court to address, Intellectual Ventures cannot possibly claim to suffer undue prejudice by a
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`stay, and much of the Court’s work on this case lies ahead, FedEx respectfully requests that the
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`Court grant a stay for the limited period to permit the invalidity challenges that have already
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`started to complete.
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`A.
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`The IPR Proceedings Will Simplify The Issues For The Court And Parties
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`The likelihood of the four instituted IPRs and four pending petitions simplifying this case
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`is high and supports a stay. Simplification of the issues is often “the most important factor
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`bearing on whether to grant a stay.” NFC Tech., 2015 WL 1069111, at *4. Where, as here, IPR
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`trials are instituted for a substantial proportion of asserted claims, simplification is likely because
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`“if the proceedings result in cancelation of some or all of the asserted claims, either some portion
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`6
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`Exhibit 2113 Page 10
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`

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`of the litigation will fall away, or the litigation will come to an end altogether.” See id. at *4, *7
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`(granting stay even though three asserted claims were not instituted, where defendant had follow-
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`on IPR petition pending for three remaining asserted claims). As the Court’s decisions make
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`clear, simplification can arise and justify a stay even where not all asserted claims are part of
`
`institution decisions. See Personal Audio LLC v. Google, Inc., No. 1:15-cv-350, 2015 WL
`
`12915558, at *3 (E.D. Tex. Nov. 3, 2015) (granting stay even though three asserted claims were
`
`not instituted, and defendant had not filed follow-on IPR petition); Cellular Commc’ns Equip.,
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`LLC v. Samsung Elecs. Co., Ltd., No. 6:14-cv-759, 2015 WL 11143485, at *3, *4 (E.D. Tex.
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`Dec. 16, 2015) (granting stay for two asserted patents even though two asserted claims were not
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`instituted); Intellectual Ventures II LLC v. BITCO General Ins. Corp., No. 6:15-cv-59, 2016 WL
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`4394485, at *1, *4 (E.D. Tex. May 12, 2016) (granting stay even though one asserted claim was
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`not instituted).
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`Here, FedEx is challenging all 51 asserted claims in its four instituted IPR trials and four
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`pending petitions. The four already-instituted trials involve 26 claims from the asserted patents.
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`Based on the PTAB’s statistics, it is likely that many of these claims—and other claims
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`addressed in the four pending petitions—will be cancelled. As of July 2017, in 82% of final
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`written decisions the PTAB has cancelled claims, and in 65% the PTAB has cancelled all
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`instituted claims. Ex. 1, USPTO Trial Statistics (July 2017) at 11. Additionally, the already-
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`instituted claims cover 19 of the 24 accused instrumentalities across all defendants, and
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`incorporate 44 of the 49 claim terms and phrases for which the parties have claim construction
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`disputes. Dkt. 82-1, Appendix A at 1-23. A stay pending the outcome of the IPRs is likely to
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`significantly curtail the Court’s and parties’ pre-trial activities, reduce the scope of issues in
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`dispute, limit the parties’ briefing on substantive issues, lower Intellectual Ventures’ damages
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`
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`7
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`Exhibit 2113 Page 11
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`request, reduce the need for multiple trials, and minimize the complexity of the issues for the
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`jury.
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`The benefits of simplification are well-illustrated by the instituted IPR trial for the ’900
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`Patent. Intellectual Ventures asserts only claim 1 from this patent, and thus the IPR could
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`remove the entire patent from the case, along with two accused systems only at issue with regard
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`to the ’900 Patent (COSMOS and DADS). Intellectual Ventures accuses operations using seven
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`different systems—COSMOS, DADS, DWS, ROADS, FedEx PowerPad, Motorola Inc./Zebra
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`Technologies MC9500, and Motorola Inc./Zebra Technologies MC9500-K—of infringing the
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`’900 Patent. With the cancellation of claim 1, the IPR for the ’900 Patent will significantly
`
`simplify fact discovery, expert discovery, briefing on summary judgment, pretrial issues, and
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`trial. Indeed, the parties have eight claim construction disputes involving the ’900 Patent (Dkt.
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`82-1, Appendix A at 1-2), and FedEx asserts nine different anticipation and obviousness
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`positions for the ’900 Patent based on prior art (Ex. 2, Invalidity Contentions at 14, 18-19), as
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`well as invalidity positions based on 35 U.S.C. §§ 101, 112(1)-(2) (id. at 71, 84-85).5 The
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`instituted IPR trial has the potential, and likelihood, to entirely eliminate these issues from the
`
`case.6
`
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`5 Notably, claims to business processes, like Intellectual Ventures’ asserted claims in this case,
`are regularly invalidated by courts under § 101. See, e.g., Accenture Global Servs., GmbH v.
`Guidewire Software, Inc., 728 F.3d 1336, 1338, 1346 (Fed. Cir. 2013) (invalidating claims “for
`generating tasks to be performed”); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
`1351 (Fed. Cir. 2016) (invalidating claims “for performing real-time performance monitoring” of
`a system). FedEx’s anticipated motions for invalidity under § 101 in this litigation may thus be
`avoided if the claims are cancelled by the PTAB.
`6 By asserting 51 claims against 24 accused business processes and systems in a single lawsuit,
`Intellectual Ventures has made it impossible for the Court to conduct a single trial without
`confusing the jury. This is not a case with multiple related patents asserted against one or more
`related products. On the contrary, there is almost no overlap in Intellectual Ventures’ various
`infringement contentions for each asserted patent.
`8
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`
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`Exhibit 2113 Page 12
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`By staying this case until the IPRs have concluded, the Court would also avail itself of
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`the PTAB’s “particular expertise” with respect to the technical issues raised by the five asserted
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`patents, and “reduc[e] the complexity and length of litigation.” NFC Tech., 2015 WL 1069111,
`
`at *4. The PTAB’s resolution of FedEx’s challenges to the asserted claims will bring any viable
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`claims to the forefront, thus narrowing the invalidity and claim construction issues to be
`
`determined by the Court. In addition, Intellectual Ventures will make arguments regarding claim
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`scope and may offer claim amendments during the IPRs, all of which could affect and clarify the
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`scope of the claims. “Even if the PTAB does not invalidate any claims, the PTAB’s claim
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`construction and invalidity analyses” will still likely prove helpful to the Court. Security People,
`
`Inc. v. Ojmar US, LLC, No. 2:14-cv-04968-HSG, 2015 WL 3453780, at *3 (N.D. Cal. May 29,
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`2015). A stay would also lead to other benefits, including fewer “discovery problems relating to
`
`prior art,” “encourag[ing] a settlement without the further use of the Court,” and “[t]he cost will
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`likely be reduced for both the parties and the Court.” NFC Tech., 2015 WL 1069111, at *4.
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`Accordingly, in this large and unwieldy case the need for simplification is pressing and
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`the likelihood of achieving that through the IPRs is high. In view of the four existing IPR
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`institution decisions and the four pending petitions—all of which together address every asserted
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`patent claim—this factor strongly weighs in favor of a stay.
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`B.
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`Intellectual Ventures Will Not Suffer Undue Prejudice
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`Courts also consider “whether the stay would unduly prejudice or present a clear tactical
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`disadvantage to the non-moving party.” Norman IP Hldgs., LLC v. TP-Link Techs., Co., No.
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`6:13-cv-384, 2014 WL 5035718, at *2 (E.D. Tex. Oct. 8, 2014).
`
`Intellectual Ventures does not produce or sell any products and it does not compete with
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`any of the FedEx defendants, whose businesses focus on shipping services. Intellectual
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`Ventures, therefore, can be adequately compensated through ordinary damages principles.
`9
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`Exhibit 2113 Page 13
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`Intellectual Ventures II LLC v. BITCO General Ins. Corp., No. 6:15-cv-59, 2016 WL 4394485,
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`at *2 (E.D. Tex. May 12, 2016); see also Cellular Commc’ns Equip., LLC v. Samsung Elecs. Co.,
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`Ltd., No. 6:14-cv-759, 2015 WL 11143485, at *2 (E.D. Tex. Dec. 16, 2015) (“When a patentee seeks
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`exclusively monetary damages, as opposed to a preliminary injunction or other relief, ‘mere delay in
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`collecting those damages does not constitute undue prejudice.’”).
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`While Intellectual Ventures will likely assert it has an interest in timely enforcing its
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`patents, “that factor is present in every case in which a patentee resists a stay, and it is therefore
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`not sufficient, standing alone, to defeat a stay motion.” NFC Tech., 2015 WL 1069111, at *2.
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`Moreover, Intellectual Ventures’ own delay in filing this suit effectively negates any claim it
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`may make regarding timely enforcement. Significantly, Intellectual Ventures acquired the
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`asserted patent families between 2008 and 2011, yet waited until August 31, 2016 to file suit
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`against FedEx. This significant delay by Intellectual Ventures in enforcing its patents is
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`incompatible with any argument of prejudice caused by further delay. See Personal Audio LLC
`
`v. Google, Inc., No. 1:15-cv-350, 2015 WL 12915558, at *2 (E.D. Tex. Nov. 3, 2015) (finding
`
`patentee’s delay of 20 months to file suit negated any finding of undue prejudice).
`
`Further eliminating any cognizable prejudice to Intellectual Ventures, IPR proceedings
`
`have statutory one-year deadlines, so that the duration of the challenges does not cause undue
`
`prejudice to patentees like Intellectual Ventures. Intellectual Ventures II, 2016 WL 4394485, at
`
`*2.
`
`This factor also supports a stay because any potential prejudice Intellectual Ventures may
`
`assert—receiving alleged damages later rather than sooner—is minimal and entirely
`
`compensable through the ordinary damages phase of the litigation. As the Court has recognized,
`
`a patentee like Intellectual Ventures, which can “be adequately compensated through a damages
`
`remedy,” cannot make a showing of undue prejudice or clear tactical disadvantage from a stay.
`
`
`
`10
`
`Exhibit 2113 Page 14
`
`

`

`Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 15 of 18 PageID #: 2425
`
`See NFC Tech., 2015 WL 1069111, at *5 (citing VirtualAgility, Inc. v. Salesforce.com, Inc., 759
`
`F.3d 1307, 1318-20 (Fed. Cir. 2014)).
`
`Additionally, staying the case pending the IPRs will avoid unnecessary expenses and
`
`burdens for not only FedEx, but also for Intellectual Ventures. Because expending resources on
`
`patent claims that are eventually found invalid is not in the interest of either party, a stay would
`
`avoid this form of potential prejudice for all parties.
`
`Accordingly, in view of Intellectual Ventures’ status as a non-practicing entity and the
`
`potential of the IPRs to reduce unnecessary expenses and burdens for all parties, Intellectual
`
`Ventures would suffer no cognizable prejudice from a stay. This factor thus also supports a stay.
`
`C.
`
`The Case Is In Its Early Stages
`
`This factor considers the stage of the case with respect to important case milestones and
`
`expenses, such as “dispositive motion briefing and argument, pretrial preparation and trial
`
`preparation, which impose the most significant expenses in litigation.” Armor All/STP Prods.
`
`Co. v. Aerospace Commc’ns Hldgs. Co., Ltd., No. 6:15-cv-781, 2016 WL 6397269, at *4 (E.D.
`
`Tex. Oct. 28, 2016). The Court also considers important deadlines for “fact discovery, expert
`
`discovery, and filing dispositive motions and motions to strike.” Parthenon Unified Memory
`
`Architecture LLC v. HTC Corp., No. 2:14-cv-00690, 2016 WL 3365855, at *4 (E.D. Tex. June
`
`17, 2016). Further, the Court considers the diligence of the moving party to file its IPR petitions
`
`and seek a stay. Armor All/STP Prods., 2016 WL 6397269, at *4.
`
`Here, because the FedEx defendants were diligent in reviewing and identifying prior art
`
`for the five asserted patents, IPR petitions for all five patents were filed in January and February
`
`of 2017. This was essentially simultaneous with Intellectual Ventures serving its infringement
`
`contentions (January 2017), and actually before the defendants served their invalidity contentions
`
`(March 2017). Moreover, the initial petitions were filed 6-7 months before the statutory deadline
`11
`
`
`
`Exhibit 2113 Page 15
`
`

`

`Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 16 of 18 PageID #: 2426
`
`for filing IPR petitions, which is one year after service of the underlying complaint. 35 U.S.C.
`
`§ 315(b). As a result, claim construction briefing is only now underway and the Markman
`
`hearing is scheduled for almost two months from now, October 27, 2017. More than three
`
`months of fact discovery—which will include every party and non-party deposition—still remain
`
`before the deadline of December 6, 2017. Dkt. 54 at 3. No substantive issues have been
`
`resolved, including through dispositive and Daubert motions, which are not due until January 29,
`
`2018. Id. at 2-3. Indeed, apart from claim construction, no substantive issue has even been
`
`briefed by the parties. Trial is currently scheduled for May 7, 2018. Id. at 1. With all
`
`substantive case milestones still ahead for the parties, the case is clearly at a relatively early
`
`stage. See Intellectual Ventures II, 2016 WL 4394485 (granting stay where “expert discovery
`
`had not started”); NFC Tech., 2015 WL 1069111, at *3 (granting stay where “parties had
`
`engaged in significant discovery, and claim construction briefing was complete”).
`
`Given the early stage of the litigation, this factor also supports a stay. With all of the
`
`parties’ substantive disputes still lying ahead, the IPRs promise to significantly reduce the scope
`
`of those disputes. This will avoid the Court and parties unnecessarily spending resources on
`
`cancelled claims, moot allegations of infringement, and a host of connected discovery-related
`
`disputes. A stay will also avoid the danger of the IPRs conflicting with substantive issues in this
`
`litigation, such as claim construction, claim amendments, and findings on patentability.
`
`V.
`
`CONCLUSION
`
`For the reasons discussed above, FedEx respectfully requests that the Court stay this
`
`litigation pending completion of FedEx’s IPRs involving the asserted patents.
`
`Dated: September 1, 2017
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Jeffrey A. Berkowitz
`Jeffrey A. Berkowitz (VA Bar No. 65149)
` Email: jeffrey.berkowitz@finnegan.com
`12
`
`Exhibit 2113 Page 16
`
`

`

`Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 17 of 18 PageID #: 2427
`
`Elliot C. Cook (pro hac vice)
` Email: elliot.cook@finnegan.com
`Michael V. Young, Sr. (pro hac vice)
` Email: michael.young@finnegan.com
`Daniel C. Tucker (pro hac vice)
` Email: daniel.tucker@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive, Suite 800
`Reston, VA 20190-5675
`(571) 203-2700
`Fax: 202-408-4400
`
`Aliza George Carrano (VA Bar No. 78510)
` Email: aliza.carrano@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`(202) 408.4148
`Fax: 202-408-4400
`
`Eric H. Findlay (Bar No. 00789886)
` Email: efindlay@findlaycraft.com
`Roger B. Craft (Bar No. 0004972020)
` Email: bcraft@findlaycraft.com
`FINDLAY CRAFT, P.C.
`102 North College Avenue, Suite 900
`Tyler, TX 75702
`(903) 534-1100
`Fax: (903) 534-1137
`
`Attorneys for Defendants FedEx Corp.,
`Federal Express Corp., FedEx Ground
`Package System, Inc., FedEx Freight, Inc.,
`FedEx Custom Critical, Inc., FedEx Office
`and Print Services, Inc., and GENCO
`Distribution System, Inc.
`
`
`13
`
`
`
`
`
`Exhibit 2113 Page 17
`
`

`

`Case 2:16-cv-00980-JRG Document 104 Filed 09/01/17 Page 18 of 18 PageID #: 2428
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to Local Civil Rule CV-7(h), I hereby certify that on August 30, 2017, lead and
`
`local counsel for FedEx (Jeffrey A. Berkowitz, Elliot C. Cook, and Brian Craft) engaged in a
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`telephonic meet and confer with lead and local counsel for Plaintiff (Alan Kellman, Lauren
`
`Nowierski, and Bo Davis). Although the parties discussed their positions in good faith, they
`
`were unable to reach an agreement. Accordingly, an impasse remains, requiring resolution by
`
`the Court.
`
`/s/ Jeffrey A. Berkowitz
`Jeffrey A. Berkowitz
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record who are deemed to have consented to electronic
`service are