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`
`Types of Document: Motion to Stay Pending Inter Partes Review Judges: Rodney Gilstrap
`
`Type of Document
`
`Result of …
`
`Case
`
`Date
`
`Appeal Status
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`General Access Solutions, Ltd. v. Cellco
`Partnership d/b/a Verizon Wireless et al
`2-22-cv-00394 (EDTX)
`
`May. 22,
`2024
`
`“nu
`Ra
`
`eo
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendant's motion to stay pending inter partes review and found that the
`potential for undue prejudice and stage of the case disfavored a stay. "Granting a stay in this
`case could delay its resolution by more than two years, as the PTAB decision is not due until
`over six months after jury trial is set to begin. Such a delay would prejudice Plaintiff's ability to
`vindicate its patent rights. . . . At the time the Motion to Stay was filed, this case had been
`pending for over a year and three months and the Court had already conducted a Claim
`Construction hearing. Jury selection was a mere five months away. By the time the Motion was
`fully briefed, the parties had exchanged thousands of documents, taken numerous depositions,
`and served opening expert reports. As Plaintiff notes, the deadline for the PTAB's final written
`decision is six months after trial is set to begin in this case."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Force MOS Technology Co., Ltd. v. ASUSTeK
`Computer, Inc.
`2-22-cv-00460 (EDTX)
`
`Apr. 11,
`2024
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendant's motion to stay pending institution of inter partes review and found
`that the potential for prejudice, stage of the case, and lack of simplification of the issues
`disfavored a stay. "' [T]he failure to seek an injunction does not amount to an admission by
`plaintiff that it will not be prejudiced by a stay.' . . . [T]he original complaint had been filed (1) over
`a year before Defendant filed the Motion and (2) nearly a year before Petitioner filed the IPR
`petitions. Critically, Defendant received Plaintiff's infringement contentions on May 16, 2023.
`Defendant thus had notice of Plaintiff's positions with respect to the scope of the claims for over
`five months before the IPR petitions were filed. . . . [W]hen a party files such a premature motion
`to stay, this Court will deny the motion without prejudice to refile the same following the PTAB's
`institution decision regarding the last of the patents-in-suit to be acted upon by the PTAB.
`However, here, the Court finds that the Motion should be denied with prejudice given that only
`two of the three Asserted Patents have been challenged at the PTAB."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`without
`prejudice
`
`Denied
`without
`prejudice
`
`Denied
`
`Fendgo LLC v. Samsung Electronics Co., Ltd.
`et al
`2-23-cv-00221 (EDTX)
`
`Advanced Coding Technologies LLC v. LG
`Electronics, Inc. et al
`2-22-cv-00501 (EDTX)
`
`Polaris PowerLED Technologies, LLC v.
`Samsung Electronics America, Inc. f/k/a
`Samsung Telecommunications America LLC
`et al
`2-22-cv-00469 (EDTX)
`
`Apr. 11,
`2024
`
`Apr. 11,
`2024
`
`Mar. 15,
`2024
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`The court denied defendant's motion to sever one count of plaintiff's patent infringement suit
`and stay it pending inter partes review and found that the lack of simplification of the issues and
`the potential for undue prejudice disfavored a stay. "Given that the PTAB has indicated a
`likelihood of success only for asserted claims 1, 2, and 7—not asserted claims 3 and 5—and
`especially in light of the PTAB's skepticism regarding Ground 4, it seems possible, and in fact
`likely, that claim 5 (if not other asserted claims) will survive the IPR proceedings. . . . Doing as
`[Defendant] requests would ensure that if any claims survived the IPR proceeding . . . the Court
`and the parties would have to undertake duplicative actions, including redundant damages and
`technical discovery on overlapping accused products, two separate claim construction hearings,
`two pre-trial conferences, and two trials. Such a multiplication of this proceeding would
`unnecessarily drive up the costs and efforts required to adjudicate [Plaintiff's] patent rights,
`resulting in undue prejudice to [Plaintiff]."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Netlist, Inc. v. Micron Technology Texas, LLC
`et al
`2-22-cv-00294 (EDTX)
`
`Mar. 12,
`2024
`
`a
`
`

`

`4atDocket Navigator
`a
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`46
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Netlist, Inc. v. Samsung Electronics Co., Ltd.
`et al
`2-22-cv-00293 (EDTX)
`
`Mar. 11,
`2024
`
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`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendant's renewed motion to stay pending inter partes review and found
`that the lack of undue prejudice and stage of the case disfavored a stay. "A delay in the
`proceedings would be prejudicial to [Plaintiff] as a competitor to [Defendant], and any stay could
`be further extended if either party appeals the PTAB's findings to the Federal Circuit. Further, the
`Court is convinced that timely resolution of [Plaintiff's] patent claims are warranted given that the
`next generation DIMMs will soon make the allegedly infringing accused DIMMs obsolete. The
`fact that [Plaintiff] is seeking solely monetary damages does not mean that [Plaintiff] cannot be
`prejudiced by a significant delay of an imminent trial date. . . . The parties have engaged in
`substantial discovery, claim construction, and have served expert reports. Further, the trial is only
`a few months away."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied as
`moot
`
`NorthStar Systems LLC v. Volkswagen AG
`2-22-cv-00486 (EDTX)
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Resonant Systems, Inc. v. Samsung
`Electronics Co., Ltd. et al
`2-22-cv-00423 (EDTX)
`
`Mar. 08,
`2024
`
`Mar. 08,
`2024
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court granted defendants' motion to stay pending inter partes review and found that the
`potential simplification of the issues favored a stay. "If the PTAB were to find some or all of the
`claims under review to be valid, Defendants would be estopped from asserting invalidity
`defenses on any grounds they raised or reasonably could have raised during inter partes review.
`Further, the cancellation of some or all of the claims could result in simplification of issues in this
`case. This Court declines [Plaintiff's] invitation to hold that the PTAB must expressly comment
`that the grounds for institution are particularly 'strong' as to every claim to find that there is a
`likelihood of issue simplification. . . . To adopt this posture would essentially allow the PTAB to
`decide the stay issue by making or withholding early evaluating comments."
`
`The court granted defendants' motion to stay pending inter partes review and found that the
`stage of the case favored a stay. " [T]his case has not yet had a Markman hearing. At the time of
`the filing of the present Motion, the parties had only conducted 8 two depositions. [Defendant]
`alleges (and [Plaintiff] does not dispute) that the parties still have the bulk of depositions ahead
`of them, including depositions in Korea. . . . While [Defendant] could have acted sooner in initially
`filing its petitions for inter partes review, it filed its Motion to Stay with reasonable dispatch and
`at an early stage of the case[.] "
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Granted
`
`NorthStar Systems LLC v. Volkswagen AG
`2-22-cv-00486 (EDTX)
`
`Netlist, Inc. v. Micron Technology, Inc. et al
`2-22-cv-00203 (EDTX)
`
`Mar. 08,
`2024
`
`Feb. 10,
`2024
`
`Stay of Proceedings
`└ Factors Considered
`└ Reduction of Litigation Burden
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`District Court Procedural Issues
`└ Motion Practice in General
`└ Reconsideration
`
`The court sua sponte reconsidered an earlier order declining to stay the case pending inter
`partes review and instead instituted a stay. "This case began with six asserted patents.1 All of
`these patents have been instituted for review by the Patent Trial and Appeal Board (PTAB). Four
`of these six patents have been invalidated by the PTAB. These decisions are being appealed.
`The remaining two patents . . . have been instituted for review by the PTAB but no decision has
`been issued to date. However, it is expected that the decisions from the PTAB will issue by or
`before [two months from now]. To put this particular case to trial before a jury in this Court before
`the PTAB issues its decision on the two remaining patents risks an inefficient consumption of
`limited judicial resources that makes imposing a targeted stay, until that ruling is received,
`advisable."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Denied
`
`Objection
`overruled /
`report
`adopted
`
`Netlist, Inc. v. Micron Technology, Inc. et al
`2-22-cv-00203 (EDTX)
`
`Netlist, Inc. v. Micron Technology, Inc. et al
`2-22-cv-00203 (EDTX)
`
`Netlist, Inc. v. Micron Technology, Inc. et al
`2-22-cv-00203 (EDTX)
`
`Feb. 10,
`2024
`
`Jan. 31,
`2024
`
`Jan. 31,
`2024
`
`

`

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`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`without
`prejudice
`
`Netlist, Inc. v. Samsung Electronics Co., Ltd.
`et al
`2-22-cv-00293 (EDTX)
`
`Oct. 17,
`2023
`
`District Court Procedural Issues
`└ Stay of Proceedings
`
`The court denied without prejudice as premature defendant's motion to stay pending inter
`partes review. "Considering these circumstances, the Court concludes that [Defendant's] Motion
`is premature in that only three out of the four Asserted Patents has had a decision instituting
`IPRs. A stay of these proceedings in advance of the PTAB's decision on whether or not to
`institute inter partes review as to all of the Asserted Patents should be denied. Accordingly, the
`Motion is denied without prejudice to refiling of the same, which shall be permitted within
`fourteen (14) days following the PTAB's institution decision regarding the last of the patents-in-
`suit to be acted upon by the PTAB."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`without
`prejudice
`
`Denied
`without
`prejudice
`
`Denied
`without
`prejudice
`
`Denied
`without
`prejudice
`
`Denied
`
`Liberty Access Technologies Licensing LLC v.
`Marriott International, Inc.
`2-22-cv-00318 (EDTX)
`
`Polaris PowerLED Technologies, LLC v.
`Samsung Electronics America, Inc. f/k/a
`Samsung Telecommunications America LLC
`et al
`2-22-cv-00469 (EDTX)
`
`Liberty Access Technologies Licensing LLC v.
`ASSA ABLOY AB et al
`2-22-cv-00507 (EDTX)
`
`Resonant Systems, Inc. v. Samsung
`Electronics Co., Ltd. et al
`2-22-cv-00423 (EDTX)
`
`MyPort, Inc. v. Samsung Electronics Co., Ltd.
`et al
`2-22-cv-00114 (EDTX)
`
`Aug. 24,
`2023
`
`Aug. 18,
`2023
`
`Aug. 11,
`2023
`
`Aug. 09,
`2023
`
`Jun. 13,
`2023
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendants' motion to stay pending inter partes review and found that the
`potential for undue prejudice, stage of the case, and lack of simplification of the issues
`disfavored a stay. " [Plaintiff] has an interest in the timely enforcement of its patent rights.
`Granting a stay in this case could delay the case by nearly two years . . . . There was no
`unreasonable delay in filing suit on part of [Plaintiff]. . . . [T]he Court is persuaded by [Plaintiff's]
`argument that because [Defendant] is receiving the benefit of post-motion facts—the PTAB
`decision instituting IPR—[Plaintiff] should receive the same regarding the stage of litigation. . . .
`[T]he deadline for the PTAB's final written decision is . . . over two and a half months after trial is
`set to begin in this case. Given the substantial amount of work and financial resources already
`poured into this case, this factor does not favor a stay. . . . The Court is reluctant to grant a stay,
`thereby delaying timely enforcement of [Plaintiff's] patent rights for months (and possibly years),
`where the PTAB has not found that [Defendant] is likely to succeed on most, if not all, of the
`asserted claims."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Granted
`
`Denied
`
`Scorpcast, LLC d/b/a HaulStars v. Webtwo BV
`2-20-cv-00209 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. Miriskana
`Limited
`2-20-cv-00202 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. Hot G Vibe
`2-20-cv-00197 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. Logical Int.
`BV
`2-20-cv-00199 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. Pioneer
`Stream Technologies Ltd.
`2-20-cv-00205 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. Quicksol
`GmbH
`2-20-cv-00207 (EDTX)
`
`BoxCast Inc. v. Resi Media LLC
`2-21-cv-00217 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. HMZ
`Investments Ltd.
`2-20-cv-00196 (EDTX)
`
`Apr. 28,
`2023
`
`Apr. 28,
`2023
`
`Apr. 28,
`2023
`
`Apr. 28,
`2023
`
`Apr. 28,
`2023
`
`Apr. 28,
`2023
`
`Apr. 28,
`2023
`
`Apr. 27,
`2023
`
`

`

`4atDocket Navigator
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`a
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`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Granted
`
`Granted
`
`Denied
`
`Granted
`
`Scorpcast, LLC d/b/a HaulStars v. Straplezz
`Inc.
`2-20-cv-00208 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. Panda
`Hosting Limited
`2-20-cv-00204 (EDTX)
`
`Scorpcast, LLC dba HaulStars v. Media
`Solutions Canarias
`2-20-cv-00201 (EDTX)
`
`Scorpcast, LLC d/b/a HaulStars v. FUSEE
`BVBA
`2-20-cv-00195 (EDTX)
`
`Arigna Technology Limited v. Porsche AG et
`al
`2-21-cv-00173 (EDTX)
`
`Luminati Networks Ltd. v. Teso LT, UAB a/k/a
`UAB Teso LT et al
`2-19-cv-00395 (EDTX)
`
`Netlist, Inc. v. Samsung Electronics Co., Ltd.
`et al
`2-21-cv-00463 (EDTX)
`
`Communication Technologies, Inc. v.
`Samsung Electronics America, Inc. et al
`2-21-cv-00444 (EDTX)
`
`Apr. 27,
`2023
`
`Apr. 27,
`2023
`
`Apr. 27,
`2023
`
`Apr. 27,
`2023
`
`Feb. 28,
`2023
`
`Feb. 28,
`2023
`
`Feb. 03,
`2023
`
`Feb. 02,
`2023
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court granted defendants' motion to stay pending inter partes review and determined that
`the lack of undue prejudice, the stage of the proceedings, and the potential simplification of the
`issues favored a stay. "Plaintiff fails to establish that monetary damages are inadequate to
`remedy any harm caused by Defendants. Indeed, Plaintiff's concerns of delay are undermined by
`the fact that a final written decision on the patentability of the claims must be issued within one
`year of institution. . . . Defendants could have acted sooner in filing their petitions for inter partes
`review. However, with the close of discovery, the claim construction hearing, and the trial setting
`all in the future, the Court concludes that this factor weighs in favor of a stay, but only slightly. . . .
`[G]iven that inter partes review has been instituted on all claims of the '444 Patent and on
`multiple grounds, the likelihood of simplification of issues is material."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Village Green Technologies, LLC v. Samsung
`Electronics Co LTD et al
`2-22-cv-00099 (EDTX)
`
`Jan. 25,
`2023
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court granted defendants' motion to stay pending inter partes review and determined that
`the stage of the case and potential simplification of the issues favored a stay. "Significantly, even
`though the IPR petitions were filed two months after this lawsuit was initiated, Plaintiff had yet to
`serve Defendants by the time the IPR petitions were filed . . . . The Court finds that Defendants
`acted with reasonable dispatch in filing their petitions for inter partes review and their Motion. . . .
`The PTAB found that Defendants established a reasonable likelihood that they would prevail as
`to least one of their challenged claims and instituted inter partes review as to all of the
`challenged claims on all of the grounds of unpatentability asserted in the petitions. . . . [T]he
`Court finds that the likelihood of simplification of issues is high."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`California Institute of Technology v. Samsung
`Electronics Co., Ltd. et al
`2-21-cv-00446 (EDTX)
`
`Jan. 20,
`2023
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendants' motion to stay pending institution of inter partes review and
`determined that the potential for prejudice, stage of the case, and lack of simplification of the
`issues disfavored a stay. "The IPR proceedings at the PTAB are currently in their infancy (having
`been requested almost a year after the filing of the present action), and therefore granting a stay
`would require both [parties] to conduct the entire inter partes review proceeding from its initial
`stages. By contrast, the present case is approximately eight months from jury selection, and the
`parties have behind them a large portion of the expense related to discovery and claim
`construction. . . . [Defendant] waited ten months after this case was initiated to file its IPRs and to
`seek a stay from the Court. . . . [Defendant] cites to generic statistics that 'the PTAB instituted
`66% of trial petitions' in 2022 to conclude that it is likely that the PTAB will likewise institute
`[Defendant's] IPRs. The Court is not persuaded by such speculation."
`
`

`

`4atDocket Navigator
`a
`
`46
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Viavi Solutions Inc. v. Zhejiang Crystal-
`Optech Co Ltd.
`2-21-cv-00378 (EDTX)
`
`Nov. 10,
`2022
`
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`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`The court denied defendant's motion to stay pending institution of inter partes review based on
`the lack of simplification of the issues. " [T]he petitions discussed in the IPR Motion have not been
`instituted upon by the PTAB. It is the Court's established practice to consider that motions to stay
`pending IPR proceedings which have not been instituted are inherently premature and should
`be denied as such. At this nascent stage of the PTAB proceedings, it is impossible for the Court
`to determine 'whether the stay will likely result in simplifying the case before the court.' Indeed, if
`the PTAB denies institution of the IPRs, there will be no simplification of the case before the
`Court at all."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`TQ Delta, LLC v. CommScope Holding
`Company, Inc. et al
`2-21-cv-00310 (EDTX)
`
`Nov. 04,
`2022
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendants' motion to stay pending inter partes review and concluded that the
`potential for undue prejudice, stage of the case, and lack of potential simplification of the issues
`disfavored a stay. " [A]lthough the PTAB found a 'reasonable likelihood' that claim 10 of the
`[patent-at-issue] will be determined unpatentable under all asserted grounds of unpatentability,
`there remains a relative possibility that the PTAB concludes otherwise. In such a scenario, Claim
`10 . . . would remain and result in a second trial. . . . Significant deadlines, such as claim
`construction and fact discovery, have already passed. Other important dates, such as the pretrial
`conference and trial, have been extended by up to three months but are quickly approaching. . .
`. A partial stay could divide this case into two cases and require two trials, significantly
`complicating matters."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Koninklijke KPN NV v. Telefonaktiebolaget
`LM Ericsson et al
`2-21-cv-00113 (EDTX)
`
`Jul. 07,
`2022
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendant's motion to stay pending inter partes review of two of three patents-
`in-suit because the undue prejudice to plaintiff and advanced stage of the case weighed against
`a stay. "Here, where fact discovery, expert discovery, and pre-trial motion practice are complete
`and [plaintiff] has already incurred the majority of its expenses associated with this litigation, a
`delay of the imminent trial date and the assertion of its patent rights unduly prejudices [plaintiff]. .
`. . This case is in a particularly advanced stage, and a jury trial on the current schedule will have
`long concluded before the PTAB is likely to issue final written decisions."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Granted
`
`Denied
`
`BoxCast Inc. v. Resi Media LLC
`2-21-cv-00217 (EDTX)
`
`K.Mizra LLC v. AT&T Corp. et al
`2-21-cv-00241 (EDTX)
`
`Packet Intelligence LLC v. NetScout Systems,
`Inc. et al
`2-16-cv-00230 (EDTX)
`
`May. 25,
`2022
`
`May. 12,
`2022
`
`May. 04,
`2022
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`Following a jury trial and a judgment that was affirmed in part on appeal, the court denied
`defendant's motion to stay pending inter partes review plaintiff's appeal of final written decisions
`finding the patents-in-suit to be unpatentable. " [Plaintiff] tried this case [5 years ago] and has yet
`to recover monetary relief despite successfully defending its finding of infringement and pre-suit
`damages on appeal -- delaying this case further in the face of its advanced stage only increases
`the prejudice on PI and places it at a tactical disadvantage. . . . These proceedings are at an
`unquestionably advanced stage -- the Court and the parties have expended substantial
`resources in adjudicating the parties' issues. . . . Given that the only issues remaining are
`discrete damages-related issues that do not overlap with the previously-affirmed issues of
`validity, [defendant's] arguments related to estoppel are misplaced and this factor strongly
`weighs against granting a stay."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`VARTA Microbattery GmbH v. Guangdong
`Mic-Power New Energy Co., Ltd.
`2-21-cv-00036 (EDTX)
`
`Jan. 26,
`2022
`
`

`

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`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Gesture Technology Partners, LLC v. Huawei
`Device Co., Ltd. et al
`2-21-cv-00040 (EDTX)
`
`Jan. 19,
`2022
`
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`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`The court denied defendant's motion to stay pending inter partes review and ex parte
`reexamination because the lack of potential simplification of issues weighed against a stay. "With
`regard to the IPR proceedings, [plaintiff] is correct that the absence of any estoppel binding on
`[defendant] as a result of those proceedings renders the issue simplification factor either neutral
`or slightly against a stay. Likewise, for the EPR proceedings, [defendant's] motion is at best
`premature. While [defendant] has informed the Court that EPR requests were granted as to all
`four Asserted Patents, it does not report that any Office Actions have issued rejecting any of the
`asserted claims. . . . It is the movant's burden to demonstrate that a stay is warranted, and the
`Court concludes that [defendant's] Motion fails to meet that burden in this case."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`VARTA Microbattery GmbH v. Guangdong
`Mic-Power New Energy Co., Ltd.
`2-21-cv-00036 (EDTX)
`
`Jan. 07,
`2022
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`The court denied defendant's motion to stay pending inter partes review because a lack of
`potential simplification of issues weighed against a stay. " [T]he PTAB has declined to institute
`review regarding two of the six Asserted Patents. . . . [A] stay will not simplify any issues with
`respect to the instituted [four] Patents because the PTAB granted [plaintiff's] motions to amend,
`allowing substitute claims to issue rather than cancelling the claims altogether. The PTAB's
`decisions thus did not narrow the remaining validity issues -- and in fact made them more
`complex -- as the amended claims may require [defendant] to assert additional prior art
`references and combinations. . . . Regardless of how the case ultimately proceeds, there has
`been no simplification -- nor is such reasonably foreseeable -- as a result of the IPRs that have
`been filed."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`RFCyber Corp. v. Google LLC f/k/a Google
`Inc. et al
`2-20-cv-00274 (EDTX)
`
`Jan. 04,
`2022
`
`Stay of Proceedings
`└ Factors Considered
`└ Prejudice From Stay/Tactical
`Advantage
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendants' motion to stay pending inter partes and post-grant review
`proceedings because the lack of potential simplification of issues, stage of the case, and undue
`prejudice to plaintiff weighed against a stay. " [T]he PTAB has declined to institute regarding two
`of the four remaining Asserted Patents. Thus, a stay will not simplify the case with respect to the
`non-instituted [two patents]. Although a stay could in theory simplify the remaining validity issues
`with respect to the instituted [two patents], the PTAB would not render its final written decision
`until approximately. . . 9 months after this Court's . . . trial date. [Defendant's] offer to withdraw its
`Motion to Stay with respect to the non-instituted [patents] would in effect require the Court to
`hold two entirely separate trials -- potentially more than a year apart. . . . Such an approach
`would create significant inefficiencies that would more than offset any simplification gained
`through the IPR process."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Denied
`without
`prejudice
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`K.Mizra LLC v. Broadcom Incorporated
`2-21-cv-00247 (EDTX)
`
`BoxCast Inc. v. Resi Media LLC
`2-21-cv-00217 (EDTX)
`
`Dec. 02,
`2021
`
`Dec. 01,
`2021
`
`The court denied without prejudice defendant's motion to stay pending its petitions for inter
`partes review. "Where a motion to stay is filed before the PTAB institutes any proceeding, courts
`often withhold a ruling pending action on the petition by the PTAB or deny the motion without
`prejudice to refiling in the event that the PTAB institutes a proceeding. Indeed, this Court has a
`consistent practice of denying motions to stay when the PTAB has yet to institute post-grant
`proceedings."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Granted
`
`Denied
`
`K.Mizra LLC v. Broadcom Incorporated
`2-21-cv-00247 (EDTX)
`
`K.Mizra LLC v. Hewlett Packard Enterprise
`Co. et al
`2-21-cv-00305 (EDTX)
`
`ACQIS LLC v. Samsung Electronics Co., Ltd.
`et al
`2-20-cv-00295 (EDTX)
`
`Nov. 22,
`2021
`
`Nov. 17,
`2021
`
`Oct. 12,
`2021
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`The court denied defendant's motion to stay pending inter partes review after the PTAB denied
`all ten of its petitions for review. "After [defendant] filed the Motion to Stay, the PTAB denied all
`ten petitions for IPR regarding the Asserted Patents. . . . Here, the PTAB has declined to institute
`an IPR trial regarding any of the asserted claims. Accordingly, a stay will not simplify the case."
`
`

`

`Motion to Stay Pending Inter
`Partes Review
`
`Granted
`
`Nanoco Technologies, Ltd. v. Samsung
`Electronics Co., Ltd. et al
`2-20-cv-00038 (EDTX)
`
`Jul. 01,
`2021
`
`4atDocket Navigator
`a &
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`PDF
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court granted the parties' joint motion to stay pending inter partes review. "The Court,
`having considered the relevant factors, is hesitant to stay this case. Discovery is complete. . . . A
`firm trial date is set. Although a stay could simplify issues for trial in the abstract and on paper, it
`does so at the expense of delaying the speedy and efficient adjudication of the other issues in
`controversy. [Defendant] filed its IPR petitions roughly nine months after [plaintiff] filed its
`complaint. Given the fairly predictable timelines in this Court and the statutory timelines at the
`PTAB, [defendant] could have anticipated that institution decisions would occur in the shadow of
`pre-trial briefing, with the potential date for final written decisions from the PTAB far exceeding
`the scheduled trial date in this Court. . . . In fact, it is increasingly common for the PTAB to decline
`to institute inter partes review in view of parallel district court proceedings if the district court will
`reach trial on the merits more efficiently and expeditiously. . . . But for the parties' agreement on
`the Motion, the Court would likely have denied this Motion."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`
`Acorn Semi, LLC v. Samsung Electronics Co.,
`Ltd. et al
`2-19-cv-00347 (EDTX)
`
`Mar. 22,
`2021
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`Stay of Proceedings
`└ Factors Considered
`└ Stage of Litigation
`
`The court denied defendant's renewed motion to stay pending inter partes review because the
`stage of the case and lack of simplification of issues favored a stay. "This case is in a particularly
`advanced stage, and a jury trial on the current schedule will have long concluded before the
`PTAB is likely to issue final written decisions. . . . Given the complexity of the legal issues before
`the PTAB (including a prior art challenge pendent on application of 35 U.S.C. § 112), the possibility
`of further delays due to appeal is almost certain. . . . [I]ssue simplification . . . also weighs against
`granting a stay, given [the parties'] respective narrowing of their asserted claims and defenses.
`The Court and the PTAB are presented with separate issues, and there is no reason those issues
`cannot be adjudicated in parallel."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Denied
`without
`prejudice
`
`Garrity Power Services LLC v. Samsung
`Electronics Co., Ltd. et al
`2-20-cv-00269 (EDTX)
`
`Feb. 17,
`2021
`
`Stay of Proceedings
`└ Factors Considered
`└ Simplification of Issues
`
`The court denied without prejudice defendant's motion to stay pending its petition for inter
`partes review. " [T]his Court has a consistent practice of denying motions to stay when the PTAB
`has yet to institute post-grant proceedings. . . . [T]he Court concludes that [defendants'] motion is
`premature, and a stay of these proceedings in advance of the PTAB's decision on whether or not
`to institute inter partes review of the Asserted Patent should be denied."
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Motion to Stay Pending Inter
`Partes Review
`
`Objection
`overru