Case 2:20-cv-00274-JRG Document 201 Filed 01/04/22 Page 1 of 3 PageID #: 14181
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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` CASE NO. 2:20-CV-274-JRG
` [LEAD CASE]
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` CASE NO. 2:20-CV-335-JRG
` [MEMBER CASE]
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`RFCYBER CORP.,
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`v.
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`GOOGLE LLC, GOOGLE PAYMENT
`CORP.
`___________________________________
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`RFCYBER CORP.,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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`ORDER
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`Before the Court is Defendants’ Motion to Stay Pending Inter Partes Review of U.S. Patent
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`Nos. 8,448,855, 8,118,218, 9,189,787, and 9,240,009 and Post-Grant Review of U.S. Patent No.
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`10,600,046 (the “Motion to Stay”) filed by Defendants Samsung Electronics Co., Ltd., Samsung
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`Electronics America, Inc., Google LLC and Google Payment Corp. (collectively, “Samsung”).1
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`(Dkt. No. 65). In the Motion to Stay, Samsung moves to stay the above-captioned case pending
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`completion of the Patent Trial and Appeal Board’s (“PTAB”) inter partes review (“IPR”) of all
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`claims asserted through United States Patent Nos. 8,448,855 (“’855 Patent”), 8,118,218 (“’218
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`Patent”), 9,189,787 (“’787 Patent”), and 9,240,009 (“’009 Patent”), as well as the post grant review
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`(“PGR”) of all claims asserted through United States Patent No. 10,600,046 (“’046 Patent”)
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`(collectively, the “Asserted Patents”).
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`1 Google LLC and Google Payment Corp. have since been dismissed. (See Dkt. Nos. 72–73, 127, 129).
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`Jawbone's Exhibit No. 2002, IPR2022-01084
`Page 001
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`Case 2:20-cv-00274-JRG Document 201 Filed 01/04/22 Page 2 of 3 PageID #: 14182
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`I.
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`BACKGROUND
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`Plaintiff RFCyber Corp. (“RFCyber”) filed this action on August 21, 2020, asserting
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`infringement by Samsung of the Asserted Patents. (Dkt. No. 1). Samsung filed the Motion to Stay
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`after filing its IPR petitions challenging the asserted claims of the Asserted Patents, but before the
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`PTAB decided whether to institute with respect to the same. (See Dkt. No. 65 at 7). Since the filing
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`of the Motion to Stay, the PTAB instituted review with respect to the ’787 and ’009 Patents but
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`denied institution with respect to the ’855 and ’218 Patents. (Dkt. Nos. 164, 183). Although the
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`parties have not provided an update regarding the status of the PGR petitions as to the ’046 Patent,
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`RFCyber did not elect any claims from the ’046 Patent in its election of asserted claims filed on
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`September 15, 2021 (Dkt. 110-1). Thus, the ’046 Patent is no longer relevant to the present Motion
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`to Stay. Samsung has offered to withdraw its Motion to Stay with respect to the ’855 and ’218
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`Patents, while reiterating its request for a stay pending completion of the IPRs with respect to the
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`’787 and ’009 Patents. (Dkt. No. 183). This case has already completed claim construction and is
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`set for trial on March 21, 2022. (Dkt. Nos. 63, 147).
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`II.
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`DISCUSSION
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`The district court has the inherent power to control its own docket, including the power to
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`stay proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997). How to best manage the court’s
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`docket “calls for the exercise of judgment, which must weigh competing interests and maintain an
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`even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936). “District courts typically
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`consider three factors when determining whether to grant a stay pending inter partes review of a
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`patent in suit: (1) whether the stay will unduly prejudice the nonmoving party, (2) whether the
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`proceedings before the court have reached an advanced stage, including whether discovery is
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`complete and a trial date has been set, and (3) whether the stay will likely result in simplifying the
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`2
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`Jawbone's Exhibit No. 2002, IPR2022-01084
`Page 002
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`Case 2:20-cv-00274-JRG Document 201 Filed 01/04/22 Page 3 of 3 PageID #: 14183
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`case before the court.” NFC Techs. LLC v. HTC Am., Inc., 2015 WL 1069111, at *2 (E.D. Tex.
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`Mar. 11, 2015). “[The] most important factor bearing on whether to grant a stay in this case is the
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`prospect that the inter partes review proceeding will result in simplification of the issues before
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`the Court.” Id. at *4.
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`Here, the PTAB has declined to institute regarding two of the four remaining Asserted
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`Patents. Thus, a stay will not simplify the case with respect to the non-instituted ’855 and ’218
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`Patents. Although a stay could in theory simplify the remaining validity issues with respect to the
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`instituted ’787 and ’009 Patents, the PTAB would not render its final written decision until
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`approximately December 2022—9 months after this Court’s March 21, 2022 trial date. Samsung’s
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`offer to withdraw its Motion to Stay with respect to the non-instituted ’855 and ’218 Patents would
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`in effect require the Court to hold two entirely separate trials—potentially more than a year apart—
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`when considering both the instituted and non-instituted patents. Such an approach would create
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`significant inefficiencies that would more than offset any simplification gained through the IPR
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`process. Accordingly, “[t]he most important factor bearing on whether to grant a stay” weighs
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`heavily against granting a stay. Id. The Court need not address the remaining factors.
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`III. CONCLUSION
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`For these reasons, the Court concludes that the Motion to Stay should be and hereby is
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`DENIED.
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`3
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 4th day of January, 2022.
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`Jawbone's Exhibit No. 2002, IPR2022-01084
`Page 003
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