IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`RESONANT SYSTEMS, INC. d/b/a
`REVELHMI,
` Plaintiff,
`v.
`NINTENDO CO., LTD.,
` Defendant.
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`CIVIL ACTION NO. 2:25-CV-90-JRG
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`MEMORANDUM OPINION AND ORDER
` Before the Court is the Motion to Stay Pending Inter Partes Review (Dkt. No. 18) filed by
`Defendant Nintendo Co., Ltd. In the Motion, Defendant asks the Court to stay the above-captioned
`case pending inter partes review (“IPR”) of “both of the only remaining claims of the asserted
`patent in this case”: U.S. Patent No. 8,860,337 (“the ’337 Patent”). (Id. at 1).
`I. Background
`The ’337 Patent is directed to “improvements in haptic feedback devices” such as video -
`game controllers. (See Dkt. No. 1, at 1, 3). In this lawsuit, which was filed on January 31, 2025,
`Plaintiff alleges that Defendant’s product, the Nintendo Switch, infringes the ’337 Patent. ( Id. at
`3). Defendant released the Nintendo Switch for public sale on March 3, 2017. (Id. at 4).
`Plaintiff has asserted the ’337 Patent against a litany of defendants. (Dkt. No. 18, at 2). In
`response to one such action, Apple, Inc. filed an IPR petition challenging Claims 1, 2, 3, and 4 of
`the ’337 Patent. (Id.). The PTAB instituted IPR on those Claims on October 15, 2024. (Dkt. No.
`18-9, at 2). The PTAB’s final written decision is expected to issue by October 15, 2025.
`On March 10, 2025, Defendant filed its own IPR petition, which it represents is
`“substantively identical to Apple’s.” (Dkt. No. 18, at 4). It also moved to join Apple’s instituted
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`IPR. ( Id.). Defendant has agreed to be bound not only by its own IPR arguments but also by
`Apple’s. (Dkt. No. 30, at 5 (citing 35 U.S.C. § 315(e))).
` This case is set for jury selection and trial on November 2, 2026. (Dkt. No. 41). Plaintiff
`has disclaimed Claims 1, 4, and 5 of the ’337 Patent. (Dkt. No. 18, at 2). As a result, only Claims
`2 and 3 of the ’337 Patent remain at issue.
`II. Legal Standard
`District courts have the inherent power to control their own docket, including the power to
`stay proceedings. Clinton v. Jones , 520 U.S. 681, 706 (1997). How to best manage a court’s
`docket “calls for the exercise of judgment, which must weigh competing interests and maintain an
`even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936).
`“District courts typically consider three factors when determining whether to grant a stay
`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
`including whether discovery is complete and a trial date has been set, and (3) whether the stay will
`likely result in simplifying the case before the court.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-
`cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.). “Based on th[ese]
`factors, courts determine whether the benefits of a stay outweigh the inherent costs of postponing
`resolution of the litigation.” Id.
`“A stay is particularly justified when the outcome of a PTO proceeding is likely to assist
`the court in determining patent validity or eliminate the need to try infringement issues. AGIS
`Software Dev. LLC v. Google LLC, No. 2:19-cv-359-JRG, 2021 WL 465424, at *2 (E.D. Tex. Feb.
`9, 2021) (internal quotation marks omitted). When “the PTAB has instituted IPR proceedings . . .
`as to all claims of all asserted patents, this Court . . . routinely stay[s] cases” because “the claims
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`may potentially be modified, dropped, or canceled in light of such parallel proceedings” and those
`claims are not presently “ready to move forward toward trial.” Id.
`Defendant “bears the burden of showing that [the stay it seeks] is appropriate.” Realtime
`Data, LLC v. Rackspace US, Inc., No. 6:16- cv-961-RWS-JDL, 2017 WL 772654, at *2 (citing
`Landis, 299 U.S. at 255).
`III. Analysis
`The Court addresses each factor in turn.
`A. Issue Simplification
`The Court concludes that the issue-simplification factor weighs in favor of issuing a stay.
`As noted above, the PTAB has instituted IPR on the two remaining claims of the ’337 Patent, and
`its final written decision is expected to issue by October 15, 2025—more than a year before this
`case’s trial setting. “Given that inter partes review ha[s] been instituted on all Asserted Claims of
`[the] Asserted Patent[] on multiple grounds, there is a material likelihood of simplification of the
`issues in this case.” Resonant Systems, Inc. v. Samsung Elecs. Co., Ltd., No. 2:22- CV-423-JRG,
`2024 WL 1021023, at *3 (E.D. Tex. Mar. 8, 2024). “If the PTAB were to find some or all of the
`claims under review to be valid, Defendant[] would be estopped from asserting invalidity defenses
`on any grounds they raised or reasonably could have raised during inter partes review.”
`1 Id.
`Likewise, “the cancellation of some or all of the claims could result in simplification of issues in
`this case” because it would decrease the number of claims to be tried by the jury. Id.
`Plaintiff’s primary rejoinder is that these simplification -of-the-issues arguments are
`speculative. The law requires only that the “ stay will likely result in simplifying the case before
`the court.” NFC Tech. LLC, 2015 WL 1069111, at *2. Given that the PTAB is expected to issue
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`1 Importantly, as noted above, Defendant has agreed to be estopped from arguing that any claim of the ’337 Patent is
`invalid on any ground that Apple raised or reasonably could have raised in its IPR. (Dkt. No. 30, at 5).
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`its final written decision more than a year before this case goes to trial, and given that Defendant
`has stipulated to be bound by Apple’s arguments in that IPR, it is likely that the PTAB’s decision
`will simply the issues in this case. Accordingly, the Court finds that this factor weighs in favor of
`granting a stay.
`B. Stage of Litigation
`Defendant, in the Court’s view, has been adequately prompt and diligent in this case to
`warrant a stay. Too often, Defendants use the IPR process strategically and delay seeking it such
`that the PTAB’s decision will not issue until the Court and parties have spent many hours and
`significant resources that could have been saved if the Defendants had acted more promptly. The
`fact that this Defendant has been prompt supports this Motion in a material way. In fact, Defendant
`filed its IPR petition just thirty-eight days after Plaintiff filed suit. The parties had not yet invested
`resources into the discovery process, nor had the Court yet invested resources into claim
`construction. See Maxeon Solar Pte. Ltd. v. Canadian Solar Inc., No. 2:24-cv-210-JRG, 2025 WL
`1811321, at *2.
`Given these particular circumstances , the Court is “persuaded that the benefits of a stay
`outweigh the costs of postponing resolution in this particular case” because “the patent claims have
`not yet been construed by the Court, and discovery is not yet complete.” Veraseal LLC v. Wal -
`Mart Stores, Inc., No. 2:17-CV-527-JRG, 2018 WL 2183235, at *2 (E.D. Tex. May 11, 2018); see
`also Communication Technologies, Inc. v. Samsung Electronics America, Inc., No. 2:21-CV-444-
`JRG, 2023 WL 1478447, at *3 (E.D. Tex. Feb. 2, 2023) (“with the close of discovery, the claim
`construction hearing, and the trial setting all in the future, the Court concludes that this fact or
`weighs in favor of a stay”). Accordingly, the Court finds that this factor weighs in favor of a stay.
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`C. Prejudice
`Finally, the Court finds that Plaintiff would not be unduly prejudiced by the issuance of a
`stay. “The Court is not tasked with simply finding prejudice but with determining on a case -by-
`case basis whether that prejudice is undue.” Maxeon Solar, 2025 WL 1811321, at *2. As Plaintiff
`correctly notes, “[a]ll parties have an interest in the timely vindication of their patent rights,
`regardless of their practicing status.” Headwater Rsch. LLC v. Samsung Elecs. Co., No. 2:23- cv-
`103-JRG-RSP, 2024 WL 5080240, at *2 (E.D. Tex. Dec. 11, 2024). While Plaintiff is correct that
`the PTAB’s final written decision might not issue until April 2026 (Dkt. No. 21, at 3 (citing 35
`U.S.C. § 316(a)(11))). Such does not rise to the level of undue prejudice here.
`Granting a stay almost always creates some prejudice toward a plaintiff who seeks the
`prompt resolution of its claims, and to that extent, prejudice is inevitable whenever a case is stayed.
`However, as noted above, the Court is charged with deciding whether that prejudice is undue.
`Plaintiff has not made a compelling case that the prejudice it fears would be undue . This factor
`weighs in favor of issuing a stay.
`IV. Conclusion
`Having considered the above-described factors and the specific facts of this case, the Court
`finds that the issuance of a stay is warranted and that Defendant’s Motion should be and hereby is
`GRANTED.
`2 Accordingly, it is ORDERED that the above-captioned case is STAYED pending
`resolution of the PTAB’s inter partes review concerning the ’337 Patent.
`The Parties are ORDERED to file a joint status report within ten (10) days after the PTAB
`issues its ruling on any of the claims at issue from the Asserted Patent. Counsel shall also deliver
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`2 The Court notes that a proper analysis regarding a requested stay is a highly fact-intensive exercise and that the facts
`considered (in their totality) vary widely from case to case. Accordingly, parties are ill advised to see trends and
`patterns here that might prevail in future cases under dissimilar facts and involving disparate conduct.
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`a courtesy copy of such reports to the Court’s chambers at the Sam B. Hall, Jr. Federal Building
`and United States Courthouse, 100 E. Houston St. Marshall, TX 75670.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`So ORDERED and SIGNED this 24th day of July, 2025.
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