IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ARBOR GLOBAL STRATEGIES LLC,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., and SAMSUNG
`SEMICONDUCTOR, INC.,
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` Defendants.
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`Case No. 2:19-cv-00333-JRG-RSP
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`MEMORANDUM ORDER
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`Before the Court is the Renewed Motion to Stay Pending Inter Partes Review (“Motion”),
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`filed by Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
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`Samsung Semiconductor, Inc. (Dkt. No. 165). After consideration, the Motion is GRANTED.
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`I.
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`BACKGROUND
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`Plaintiff Arbor Global Strategies LLC (“Arbor”) sued Defendants Samsung Electronics
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`Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (collectively,
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`“Samsung”) on October 11, 2019, asserting U.S. Patent Nos. 6,781,226, 7,282,951, and RE42,035
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`(collectively, the “Asserted Patents”). Dkt. No. 1 at 5–6.1 Arbor alleges that hundreds of memory
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`products from Samsung as well as Sony and Qualcomm infringe the Asserted Patents. See Dkt.
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`No. 165 at 7–8. On March 9, 2020, Arbor served its infringement contentions, identifying the forty-
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`five claims it contends Samsung infringes. See Dkt. No. 29.
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`On May 29, 2020, Samsung filed inter partes review (“IPR”) petitions for each of the
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`Asserted Patents, accounting for all forty-five asserted claims. See Dkt. No. 46 at 4–5. Samsung
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`1 Citations are to the page numbers assigned through ECF.
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`Netflix, Inc. - Ex. 1038, Page 000001
`IPR2021-01319 (Netflix, Inc. v. CA, Inc.)
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`explains that it waited until after Arbor had served its infringement contentions so Samsung would
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`know the specific claims that Arbor alleged it infringed. See Dkt. No. 165 at 5. A month later,
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`Samsung filed a motion to stay pending IPR requesting that the Court stay this case until the Patent
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`Trial and Appeal Board (“Board”) decided the IPR of the Asserted Patents. Dkt. No. 46. The Court
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`denied that motion stating:
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`Samsung needs to show that every asserted claim has a reasonable likelihood of
`being invalidated by the Board for the Court to grant Samsung’s Motion. Here, the
`Board has not publicly determined that any asserted claim has a reasonable
`likelihood of being invalidated. Accordingly, the simplification factor strongly
`weighs against a stay . . . the Motion is denied without prejudice.
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`Dkt. No. 56 at 5. After the motion was denied, the case continued to progress towards trial. The
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`Court held a claim construction hearing and issued its claim construction order. The parties also,
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`among other things, completed fact discovery, exchanged opening expert reports, and took fact
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`depositions. See Dkt. No. 169 at 14.
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`On December 2, 2020, the Board granted Samsung’s IPR petitions, which included all
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`forty-five asserted claims. See Dkt. Nos. 165-2, 165-3, 165-4. Samsung subsequently filed this
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`Motion on December 15, 2020, notifying the Court of this development.2 See Dkt. No. 165 at 4.
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`At the time Samsung filed the Motion, expert discovery was still ongoing, dispositive and
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`Daubert motions were not yet due, the pretrial conference was less than three months away, and
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`trial was less than four months away. See Dkt. No. 98 at 1–3.
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`II.
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`LEGAL STANDARD
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`“The party seeking a stay bears the burden of showing that such a course is appropriate.”
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`Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 218-cv-390-RWS-RSP, 2019 WL 3826051,
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`2 After Samsung filed the Motion on December 15, 2020, the Court entered an order expediting briefing. Dkt. No.
`166. Arbor responded to Samsung’s Motion on December 23, 2020. Dkt. No. 169. Samsung replied on December 28,
`2020. Dkt. No. 171. Arbor did not file a sur-reply.
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`2 / 6
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`at *1 (E.D. Tex. Aug. 14, 2019) (quoting Realtime Data, LLC v. Hewlett Packard Enter. Co., No.
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`6:16-cv-86-RWS-JDL, 2017 WL 3712916, at *3 (E.D. Tex. Feb. 3, 2017)); accord Landis v. N.
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`Am. Co., 299 U.S. 248, 255 (1936). “The decision of whether to extend a stay falls solely within
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`the court’s inherent power to control its docket.” Pers. Audio LLC v. Google, Inc., 230 F. Supp.
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`3d 623, 626 (E.D. Tex. 2017) (citing ThinkOptics, Inc. v. Nintendo, No. 6:11-cv-455-LED, 2014
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`WL 4477400, at *1 (E.D. Tex. Feb. 27, 2014)); accord Clinton v. Jones, 520 U.S. 681, 706 (“The
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`District Court has broad discretion to stay proceedings as an incident to its power to control its
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`own docket.”) (citing Landis, 299 U.S. at 254).
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`District courts typically consider three factors when deciding whether to stay litigation
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`pending IPR of the asserted patent(s): “(1) whether the stay will unduly prejudice the nonmoving
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`party, (2) whether the proceedings before the court have reached an advanced stage, including
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`whether discovery is complete and a trial date has been set, and (3) whether the stay will simplify
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`issues in question in the litigation.” Trover Grp., Inc. v. Dedicated Micros USA, No. 2:13-CV-
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`1047-WCB, 2015 WL 1069179, at *2 (E.D. Tex. Mar. 11, 2015) (collecting cases).
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`III.
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`ANALYSIS
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`Samsung has shown both that the Board granted Samsung’s petitions on all asserted claims
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`and that the Board is likely to invalidate all asserted claims. See e.g. Dkt. No. 165-2.
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`a. Undue Prejudice
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`The Court previously weighed this factor as neutral since it found that a stay would not
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`cause any case-specific prejudice. See Dkt. No. 56 at 4. The parties do not offer any additional
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`arguments for this factor beyond what was already stated in the previous motion. Arbor expresses
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`concern that the stay could be extend beyond the PTAB’s decision on the IPR, but the Court may
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`3 / 6
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`not extend the stay for any appeal by Defendant if the PTAB denies relief as to certain asserted
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`claims. That will be a decision for another day.
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`Accordingly, this factor remains neutral. 3
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`b. Stage of the Case Proceedings
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`The Court denied Samsung’s original motion to stay on August 10, 2020. This Motion was
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`filed on December 15, 2020. The Court, therefore, reconsiders this factor in light of the current
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`stage of the case proceedings. Peloton Interactive, 2019 WL 3826051, at *5 (“Usually, the Court
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`evaluates the stage of the case as of the time the motion was filed.”) (citations omitted).
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`Samsung argues a stay is warranted because “[w]hile fact discovery is largely complete,”
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`the parties still need “to file and brief motions for summary judgment, motions to strike, Daubert
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`motions, and motions in limine.” Dkt. No. 165 at 13 (footnote omitted). Arbor counters that “the
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`parties have expended significant resources diligently moving the litigation.” Dkt. No. 169 at 14.
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`Arbor specifically argues that the Court entered a claim construction order, fact discovery has
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`closed, and the parties have addressed multiple discovery issues, taken multiple fact depositions,
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`and exchanged opening expert reports. See id.
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`This case is currently set for trial on April 5, 2021. Dkt. No. 98 at 1. While this fact weighs
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`against a stay, the Court considers the diligence shown by Samsung in pursuing the IPR process.
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`It is not unreasonable for the defendant to await the service of infringement contentions in a
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`complicated case such as this, in order to be sure which claims are asserted, before filing the IPR.
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`The delay between contentions and the filing of the IPR petitions is concerning but on this record
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`it is not so excessive as to indicate an effort to manipulate the schedule. The Court has stayed cases
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`3 The Court already considered the three stay factors in its previous order regarding Samsung’s original motion to
`stay. See id. at 3–6. The Court incorporates its previous analysis here, only discussing new facts and arguments
`presented by the parties.
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`4 / 6
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`at a similar stage before. See e.g., Image Processing Techs., LLC v. Samsung Elecs. Co., No. 2:16-
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`cv-505-JRG, 2017 WL 7051628, *1–2 (E.D. Tex. Oct. 25, 2017). Furthermore, Defendant did not
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`delay in notifying the Court of its desire to seek a stay of the litigation while the IPR proceeds.
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`Furthermore, while this case has progressed since the last motion was decided, there are still major
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`milestones left.
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`Accordingly, this factor remains neutral.
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`c.
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`Issue Simplification
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`In light of the Board’s institution decision, the Court will reconsider this factor. The
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`“universal practice” in this District, as well as the practice of most district courts, is to deny a
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`motion for stay when the Board has not yet acted on the IPR petition(s). Trover, 2015 WL 1069179,
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`at *6 (collecting cases); see also Peloton Interactive, 2019 WL 3826051, at *2 (citation omitted).
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`Here, the Board instituted on all asserted claims. See e.g. Dkt. No. 165-2.
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`Post-SAS, however, Samsung must point to more than a successful petition to show “that
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`the Board is likely to invalidate every asserted claim.” Dkt. No. 56 at 6 (citing SAS Inst., Inc. v.
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`Iancu, 138 S. Ct. 1348 (2018)); see also Peloton Interactive, 2019 WL 3826051, at *2. First, the
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`Board granted institution on more than one asserted ground. See Dkt. No. 165 at 6–7 (compiling
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`in a chart the grounds and references which the Board relied on for each challenged claim), 11;
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`see also Dkt. Nos. 165-2, 165-3, 165-4. Second, the Board expressly noted that Samsung “sets
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`forth a strong showing of unpatentability on the challenged claims.” See e.g. Dkt. No. 165-2
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`at 9. Taken together, Samsung has met its burden.
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` Arbor expresses concern that Samsung will not be estopped in this case from raising
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`grounds that it could have, but did not, raise in its IPRs if the claims survive review. See Dkt. No.
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`169 at 11–13. Arbor’s fear stems from Samsung’s statement in brief that “it will not pursue district
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`5 / 6
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`court invalidity challenges based on the exact same asserted grounds raised in any instituted IPRs.”
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`Dkt. No. 165 at 12 (citing Dkt. No. 165-7). Samsung is correct that it will be estopped from
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`asserting the same grounds it raised during its IPRs. However, the resulting estoppel from an IPR
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`is broader than Samsung’s stipulation. “The petitioner in an inter partes review of a claim . . . may
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`not assert [] in a civil action . . . that the claim is invalid on any ground that the petitioner raised
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`or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2) (emphasis
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`added). Congress passed this statutory scheme. Samsung cannot stipulate to less. Therefore,
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`Arbor’s concerns are unfounded.
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`Accordingly, this factor weighs in favor of granting the Motion.
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`IV.
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`CONCLUSION
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`After consideration, the Court GRANTS Samsung’s Motion. Dkt. No. 165. It is therefore
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`ORDERED that this case is STAYED until further Order of this Court. The parties shall file a
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`joint notice within ten days of the Board’s final decision regarding patentability of the claims in
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`each asserted patent.
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`6 / 6
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 7th day of January, 2021.
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`Netflix, Inc. - Ex. 1038, Page 000006
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