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`EX 1022
`EX 1022
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`Case 1:23-cv-01194-JFM Document 169 Filed 01/17/25 Page 1 of 4 PageID #: 4393
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`DUESENFELD GMBH
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`v.
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`ASCEND ELEMENTS, INC.
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`: CIVIL ACTION
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`: NO. 23-1194
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`ORDER
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`AND NOW, this 17th day of January 2025, upon considering defendant’s motion to stay
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`pending inter partes review (DI 69), and defendant’s proposed stay order (DI 166) in response
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`to our January 16, 2025 order (DI 164), it is ORDERED defendant’s motion to stay pending
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`inter partes review (DI 69) is GRANTED. This case is STAYED on the terms, and with
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`certain exceptions, set out below. The parties shall file updates on any significant developments
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`and may request relief from the stay for good cause. Duesenfeld’s motion to compel (DI 123) is
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`DENIED without prejudice to refile.
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`1.
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`As background, Duesenfeld filed a complaint against Ascend alleging
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`infringement of U.S. Patent No. 11,050,097 (the 097 patent). DI 1. The case was proceeding
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`uneventfully through fact discovery, and the parties agreed on claim constructions. DI 22, DI
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`60.
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`2.
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`Meanwhile, on May 1, 2024, third-party URT Umwelt und Recyclingtechnik
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`GmbH (URT) filed a petition for inter partes review, number IPR2024-00887, which challenges
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`the patentability of all asserted claims of the 097 patent. DI 66. Separately, on May 21, 2024,
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`Ascend filed a petition for IPR, number IPR2024-00948, which also challenges the patentability
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`of all asserted claims of the 097 patent. Id. The PTAB instituted both IPRs in late November,
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`2024. Id. Ascend promptly filed a motion to stay this litigation. DI 69. Then things heated up
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`on the docket.
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`Ascend Elements EX1022 Page 1
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`Case 1:23-cv-01194-JFM Document 169 Filed 01/17/25 Page 2 of 4 PageID #: 4394
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`3.
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`Soon after, Duesenfeld: (i) moved to amend the complaint to add newly-issued
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`U.S. Patent No. 12, 119,463 (the 463 patent),1 DI 74; (ii) moved for leave to file amended
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`infringement contentions, DI 100; (iii) moved to compel discovery relating to the amended
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`contentions, DI 123; and of course, opposed the stay, DI 92. We heard oral argument on these
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`motions. DI 144. To broadly summarize, Ascend’s position is that the PTAB is on track to
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`greatly simplify the case, and Duesenfeld’s flurry of motions mainly aim to derail a stay of the
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`litigation. Duesenfeld argues that at least one of its claims in the 097 patent (which is similar to
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`certain claims of the 463 patent) will likely survive the IPR, and that it needs our help to obtain
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`(and preserve) specific laboratory data to prove infringement of these narrower claims.
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`4.
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`We took a piecewise approach to resolving the disputes. First, we allowed the
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`amended complaint and the amended infringement contentions. DI 129. Then, considering the
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`stay, we had two main concerns. First, how would a stay affect the data that Duesenfeld says
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`Ascend is not retaining? Second, would there be sufficient economization to justify a stay when
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`the 463 patent is looming in the background? As to the first, Ascend offered to agree to a
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`preservation plan, so we invited Ascend to lay out the plan for us. DI 129, DI 164. It did. DI
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`159, DI 166. Duesenfeld views it as insufficient. DI 167. As to the second concern, we asked if
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`Ascend would consider extending any estoppel from the IPRs to the 463 patent. DI 129. It
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`declined. DI 159. But Ascend did offer to commit to filing a PGR petition for the 463 patent.
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`DI 159, DI 166.
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`1 The 463 patent covers similar technology and has similar claims, but there are
`differences that Duesenfeld says are significant with respect to the strength of the invalidity
`arguments in the IPRs and with respect to what discovery would be needed to prove
`infringement.
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`Ascend Elements EX1022 Page 2
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`Case 1:23-cv-01194-JFM Document 169 Filed 01/17/25 Page 3 of 4 PageID #: 4395
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`5.
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`With Ascend’s commitments on the table, a stay is appropriate here. Although
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`mere filing of an IPR or PGR petition rarely justifies a stay, here we have two instituted IPRs,
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`and the concern is the incremental effect of the highly similar 463 patent. The broad sweep of
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`PGR estoppel offers significant potential for simplification if the PGR for the 463 patent were
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`instituted and Duesenfeld prevails. Rather than order Ascend to file a PGR for the 463 patent,
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`we will simply give Duesenfeld leave to request that we lift the stay if Ascend has not filed a
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`PGR for the 463 patent by March 7, 2025. Similarly, if Ascend files its PGR but the PTAB
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`declines to institute, Duesenfeld may then request that we lift the stay. Presumably, we would
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`grant those requests, but Ascend will have a chance to respond (or make further stipulations) and
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`the ultimate determination will depend on the relevant factual landscape at the time.
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`6.
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`As to the preservation of data, Ascend shall engage in the following data
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`preservation measures2 during the pendency of this litigation (including during a stay) until
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`relief is sought (by either party) and granted:
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`• Temperature Measurements: Ascend will capture the temperature data
`reflected on the Dryer human-machine interfaces’ (“HMIs”) Temperature Archive
`screen. Ascend will do this by taking photos of the HMI screen as described in its
`Supplemental Statement.
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`• Pressure Measurements: Ascend will capture the pressure data reflected on the
`Dryer HMIs’ Pressure Archive screen. Ascend will do this by taking photos of
`the HMI screen as described in its Supplemental Statement.
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`• General Measurements: Ascend will capture the data reflected on the Dryer
`HMIs’ General Archive screen. Ascend will do this by taking photos of the HMI
`screen as described in its Supplemental Statement.
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`• Consult URT: No later than January 31, 2025, Ascend will consult URT to
`determine whether there is a way to digitally export data from the Dryer HMIs
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`2 Ascend’s dryers are periodically idle. When a dryer was not used in the preceding 24
`hours, Ascend will record that in a log rather than take photos of empty graphs on the Temperature
`Archive, Pressure Archive, and General Archives.
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`Case 1:23-cv-01194-JFM Document 169 Filed 01/17/25 Page 4 of 4 PageID #: 4396
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`and meet and confer with Duesenfeld to share what was learned. If it is practical
`to do so, Ascend will engage in that digital export and preserve the exported data.
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`• Main Console Export: Ascend will maintain a record of exportable event data
`from the Main Console HMI.
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`• Production of Existing Documents: Ascend will take reasonable efforts to
`search for (1) any additional evidence of historical pressure, temperature, weight,
`and other chemical analysis data; (2) any additional documentation regarding how
`the Dryer HMIs sense and record temperature, weight, or chemical analysis data;
`and (3) ask URT to provide any of the foregoing information in its possession.
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`7.
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`Inspection and deposition. The requirements set forth above are what Ascend
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`proposed to do. And it shall begin doing so immediately if it has not already. But as a limited
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`exception to the stay, we will also allow Duesenfeld some leeway to complete its investigation.
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`Absent leave, Duesenfeld may conduct discovery pertaining only to the preservation dispute. In
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`particular, we think it appropriate for Duesenfeld to complete its site inspection and no more
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`than 3 depositions. See DI 167 at 8 n.4. Ascend shall provide to Duesenfeld whatever
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`information it collects through the above-outlined requirements at least through the inspection
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`and depositions. No later than February 28, 2025, after thorough meet-and-confer, either
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`Duesenfeld shall file a motion requesting modification of the terms of preservation and showing
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`good cause, or, the parties shall file a status report confirming the terms of preservation are
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`acceptable.
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` MURPHY, J.
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`Ascend Elements EX1022 Page 4
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