Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC., (D/B/A FLYP),
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`v.
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`GOOGLE LLC,
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`CIVIL ACTION NO. 6:22-cv-00031-ADA
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`JURY TRIAL DEMANDED
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`Plaintiff,
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`Defendant.
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`DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO STAY
`PENDING INTER PARTES REVIEW
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 2 of 11
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`I.
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`INTRODUCTION
`In July and August of this year, inter partes review proceedings were instituted as to all
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`asserted claims of all Asserted Patents. Given that the final written decisions in these IPRs will
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`result either in invalidity of all asserted claims or in substantial narrowing and clarification of the
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`invalidity issues requiring resolution in this action, Defendant Google LLC moves to stay this case
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`at the conclusion of fact discovery (scheduled for August 22, 2023) pending final resolution of the
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`instituted IPRs, including any resulting appeals.
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`Because Google proposes staying this case at the conclusion of fact discovery, which is
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`imminent, Plaintiff Flyp will not be damaged or prejudiced by the requested stay, as evidence will
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`not become stale. And the most important factor in the stay analysis–simplification of the issues–
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`weighs heavily in favor of a stay. There is no doubt that pausing expert discovery, dispositive and
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`Daubert motion practice, pre-trial practice and trial until after the core invalidity issues raised by
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`the instituted IPRs are resolved will prevent the parties and the Court from expending significant
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`time, money and effort addressing issues that necessarily will be settled by the Patent Office.
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`Indeed, there is a strong possibility that the instituted IPRs will result in invalidity of all asserted
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`claims and patents, thus ending this case and rendering all further actions by the Court and the
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`parties a wasteful nullity. Accordingly, a stay pending completion of the instituted IPRs is
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`warranted in this case.1
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`II.
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`STATEMENT OF FACTS
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`Plaintiff filed the complaint in this action on January 10, 2022, asserting five patents:
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`U.S. Patent Nos. 9,667,770 (“’770 Patent”); 10,051,105 (“’105 Patent”); 10,334,094 (“’094
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`1 The parties met and conferred concerning Google’s request for a stay, and Flyp indicated that it
`opposes Google’s request.
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`1
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 3 of 11
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`Patent”); 11,012,554 (“’554 Patent”); and 11,218,585 (“’585 Patent”) (collectively the “Asserted
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`Patents”).
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`On January 10, 2023, Google petitioned for IPR of all asserted claims of all five patents.
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`See Declaration of John Cotiguala (“Cotiguala Decl.”) ¶¶ 2-6; Exs. 1-5. Every IPR was instituted
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`as follows:
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`’770 Patent: IPR2023-00360 was granted institution on August 2, 2023 on all claims
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`asserted in this case (claims 1-6). See Cotiguala Decl. ¶ 2; Ex. 1.
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`●
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`’105 Patent: IPR2023-00361 was granted institution on July 31, 2023 on all claims
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`asserted in this case (claims 1-11). See Cotiguala Decl. ¶ 3; Ex. 2.
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`●
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`’094 Patent: IPR2023-00358 was granted institution on July 31, 2023 on all claims
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`asserted in this case (claims 1-4). See Cotiguala Decl. ¶ 4; Ex. 3.
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`●
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`’554 Patent: IPR2023-00359 was granted institution on July 31, 2023 on all claims
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`asserted in this case (claims 1-4). See Cotiguala Decl. ¶ 5; Ex. 4.
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`●
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`’585 Patent: IPR2023-00357 was granted institution on July 31, 2023 on all claims
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`asserted in this case (claims 1-4). See Cotiguala Decl. ¶ 6; Ex. 5.
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`Because all claims asserted in this case are at issue in the IPRs, the outcome of the IPRs has the
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`potential to resolve all issues in this case. Final written decisions are expected within one-year of
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`the institution dates, around August 2024.
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`Trial in this case is presently set for February 19, 2024. Dkt. 112. Claim construction is
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`complete and the parties are currently completing fact discovery, which is set to close on August
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`22, 2023. Id.
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`2
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 4 of 11
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`III. LEGAL AUTHORITY
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`“[T]he power to stay proceedings is incidental to the power inherent in every court to
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`control the disposition of the causes on its docket with economy of time and effort for itself, for
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`counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). Courts generally
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`consider three factors when determining whether to stay patent litigation in light of IPR
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`proceedings: “(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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`case before the court.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058, 2015 WL 1069111,
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`at *2 (E.D. Tex. Mar. 11, 2015); see also Nobots, LLC v. Google, LLC, No. 1:22-cv-00585-RP,
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`Dkt. 53, at 1 (W.D. Tex. July 13, 2022).
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`Based on those factors, courts determine whether the benefits of a stay outweigh the
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`inherent costs of postponing resolution of the litigation. CyWee Grp. Ltd. v. Samsung Elecs. Co.,
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`No. 2:17-cv-00140-WCB, 2019 WL 11023976, at *2 (E.D. Tex. Feb. 14, 2019). A stay is
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`“particularly justified” when the outcome of a Patent Office proceeding is likely to assist the court
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`in determining patent validity or eliminate the need to try infringement issues. Id. at *1. Indeed,
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`the “most important” factor in the stay analysis is whether the issues will be simplified. NFC Tech.,
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`2015 WL 1069111, at *4.
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`IV. ARGUMENT
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`A. The stay will result in simplifying the case and may dispose of the case.
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`The “most important” factor in the stay analysis–simplification of the issues–weighs
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`heavily in favor of a stay. Google’s instituted IPR petitions challenge the validity of every claim
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`3
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 5 of 11
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`of every Asserted Patent. Favorable resolution of Google’s IPRs would thus eliminate the need for
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`this Court to decide any issues of validity or infringement.
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`Even if the Patent Trial and Appeal Board (“PTAB”) does not determine that all claims of
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`the Asserted Patents are unpatentable, the issues in this case will be significantly narrowed and
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`clarified by final written decisions in the IPRs. If the PTAB determines some claims are not
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`unpatentable, then the scope of the case necessarily will be narrowed to those claims that survive
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`the IPRs. Moreover, as to any surviving claims, estoppel under 35 U.S.C. § 315(e)(2) will apply,
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`significantly reducing and focusing the invalidity grounds that can be addressed by experts, in
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`dispositive motions and at trial in this action. Staying this case pending completion of the IPRs
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`also will permit the Court and the parties to benefit from the rulings of the PTAB judges who will
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`evaluate the prior art grounds cited in Google’s petitions and determine the validity of Plaintiff’s
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`patents in light of those grounds. See CyWee, 2019 WL 11023976, at *10; E-Watch, Inc. v. Lorex
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`Can., Inc., No. H-12-3314, 2013 WL 5425298, at *2 (S.D. Tex. Sept. 26, 2013) (“At a minimum,
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`even assuming that all the patents-in-suit survive the reexamination intact, the USPTO’s insight
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`and expertise regarding the validity of the patents would be of invaluable assistance to this court.”).
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`It is inevitable that the IPR rulings will thus focus the parties’ post-fact discovery efforts in this
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`litigation. It would make no sense for experts (infringement, validity, and damages) to address in
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`reports and at depositions, and for the Court to consider in dispositive motions or at trial, (a)
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`asserted claims that may be declared invalid by the instituted IPRs, (b) invalidity grounds that may
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`be estopped by a final written decision in the IPRs, and (c) arguments as to claim scope that likely
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`will be impacted by the positions taken and decisions issued in the instituted IPRs.
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`This Court has indicated that it will weigh (1) the scope of estoppel the movant is bound
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`by and (2) the strength of the relevant IPR petitions in the context of the asserted claims. Lone Star
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`4
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 6 of 11
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`SCM Systems, Ltd. v. Zebra Technologies Corporation, No. 6:21-cv-00842-ADA, 2023 WL
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`4923962, at *3 (W.D. Tex. July 31, 2023). As noted, Google is the petitioner in each of the
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`instituted IPRs, such that the estoppel provisions of 35 U.S.C. § 315(e)(2) apply to the only
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`defendant in this action. As to the strength of the relevant IPR petitions, the PTAB is likely to find
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`all asserted claims unpatentable.
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`Indeed, in each institution decision, the PTAB determined that Google sufficiently
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`demonstrated multiple claims of each Flyp patent are unpatentable, exceeding the statutory
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`requirement of finding a single claim unpatentable to warrant institution. 35 U.S.C § 314 (“a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”); see also, e.g., Ex. 4 at 25 (Finding that “Petitioner has sufficiently
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`demonstrated that the information presented in the Petition anticipates claim 1, and we institute on
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`all challenges raised in the Petition. . . . Still, we. . . determine that Petitioner has sufficiently
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`demonstrated, at this stage of the proceeding, that [the prior art] anticipates dependent claims 2
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`and 4[.]”).
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`The PTAB instituted an IPR proceeding against all asserted claims 1-4 of the ’585 patent
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`on all four unpatentability grounds. Ex. 5 at 2, 6. For Ground 1, the PTAB determined that there
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`is a reasonable likelihood that Google would prevail in establishing that claims 1, 2, and 4 are
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`anticipated by the prior art, where the PTAB provided an element-by-element analysis, resolving
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`all disputes in Google’s favor. Id. at 13-19 (finding that Google sufficiently showed the prior art
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`anticipates claims 1, 2, and 4 and Flyp’s arguments are “unavailing”). As to Ground 2, the PTAB
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`likewise determined that Google demonstrated a reasonable likelihood of prevailing on claim 3.
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`Id. at 19-20. Additionally, the PTAB determined that Google demonstrated a reasonable likelihood
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`of prevailing on claims 1-4 under Grounds 3-4. Id. at 20-21. The PTAB also instituted IPR
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`5
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 7 of 11
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`proceedings against all asserted claims for each of the ’094, ’554, ’770, and ’105 patents, where
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`the PTAB provided an element-by-element analysis, resolving essentially all disputes in Google’s
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`favor. Ex. 3 at 2, 6, 14-24; Ex. 4 at 2, 6, 13-27; Ex. 1 at 2, 7, 15-32; Ex. 2 at 2, 5-6, 17-35.
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`B. The stay will not unduly prejudice Plaintiff.
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`Plaintiff will suffer no prejudice if a post-fact discovery stay is implemented and expert
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`reports, dispositive motions, and trial are delayed until after the IPRs are complete. Because the
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`stay would take effect after conclusion of fact discovery, there is no concern for staleness of
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`evidence or for disruption or delay of the fact discovery process. Critically, “[a] stay will not
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`diminish the monetary damages to which [plaintiff] will be entitled if it succeeds in its
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`infringement suit—it only delays realization of those damages.” VirtualAgility Inc. v.
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`Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). A “mere delay in collecting . . .
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`damages does not constitute undue prejudice.” Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No.
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`A-13-ca-800, 2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015). Although Plaintiff is also
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`seeking an injunction, Plaintiff has not sought a preliminary injunction to date. This undercuts any
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`argument that a stay will prejudice Plaintiff. See VirtualAgility, 759 F.3d at 1319 (“VA’s
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`arguments are rational reasons for not pursuing a preliminary injunction, but the fact that it was
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`not worth the expense to ask for this remedy contradicts VA’s assertion that it needs injunctive
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`relief as soon as possible.”)
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`C. While the case is not in early stages, a stay would save the parties and Court
`significant resources.
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`Although this case is not in its infancy, significant and burdensome milestones lie ahead.
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`Expert discovery has yet to begin. Dkt. 112. Dispositive and Daubert motion deadlines are at the
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`end of October. Id. The pretrial conference is set for January 26, 2024, and jury selection is
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`scheduled for February 19, 2024. These events will impose “significant expenses on the parties
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 8 of 11
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`that might be avoided if the stay results in the simplification (or obviation) of further court
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`proceedings.” NFC Tech., 2015 WL 1069111, at * 3.
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`The proximity to trial is not dispositive. For example, the Eastern District of Texas stayed
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`a case pending IPR when the case was just two months away from trial. SSL Servs., LLC v. Cisco
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`Sys., Inc, No. 2:15-CV-433-JRG-RSP, 2016 WL 3523871, at *3 (E.D. Tex. June 28, 2016).
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`Although the case was at a late stage, it was “not yet on the eve of trial,” and the Court noted that
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`“expert discovery is ongoing and the deadline to file dispositive motions and motions to strike has
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`not yet passed.” Id. at *2. While noting the relatively advanced stage of the case, the EDTX Court
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`nonetheless granted a stay because “there is a high likelihood of issue simplification.” Id. at *3.
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`Here, as in SSL, expert discovery is not complete (in fact, it has not even begun), and the deadlines
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`for dispositive motions, motions to strike, pre-trial submissions, and trial are upcoming. Also as in
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`SSL, the issues are highly likely to be simplified by the instituted IPRs as to all asserted claims,
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`which tips the scales in favor of a stay. Notably, this case is further from trial than was SSL when
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`the stay was issued in that case (six months here versus two months in SSL).
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`As yet another example, in CyWee, the Court stayed the case pending IPRs where “claim
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`construction had been conducted and discovery was nearly complete. . . [h]owever, the most
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`burdensome parts of the case—filing and responding to pretrial motions, preparing for trial, going
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`through the trial process, and engaging in post-trial motions practice—all lie in the future.” See
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`CyWee, 2019 WL 11023976 at *6-7 (listing cases where stays were granted mere weeks or months
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`before trial). Here, even more “burdensome parts of the case” remain, as expert discovery has not
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`even begun.
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`Google has been diligent. Once the PTAB instituted the final IPR on August 2, 2023,
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`Google acted quickly to meet and confer with opposing counsel about a potential stay and to
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`7
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 9 of 11
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`prepare and file the present motion. Given the significant burdens and expenses of expert
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`discovery, dispositive and Daubert motion practice, pre-trial practice and trial yet to be imposed
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`on the parties and the Court, and in light of the fact that the instituted IPRs will very likely simplify
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`the issues in this case, the requested stay should be granted.
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`V. CONCLUSION
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`For the foregoing reasons, Google respectfully requests that the case be stayed at the
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`conclusion of fact discovery and until the IPRs and any resulting appeals are finally resolved.
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`DATED: August 18, 2023
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`Respectfully Submitted,
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`/s/ Robert W. Unikel
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Pro Hac Vice)
`johncotiguala@paulhastings.com
`Daniel J. Blake (Pro Hac Vice)
`danielblake@paulhastings.com
`Grayson S. Cornwell (Pro Hac Vice)
`graysoncornwell@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
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`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
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`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 10 of 11
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`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`David M. Fox (Pro Hac Vice)
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
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`Paige Arnette Amstutz
`State Bar No.: 00796136
`pamstutz@scottdoug.com
`SCOTT, DOUGLASS & MCCONNICO, LLP
`303 Colorado Street, Suite 2400
`Austin, TX 78701
`Telephone: (512) 495-6300
`Facsimile: (512) 495-6399
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`Attorneys for Defendant Google LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 18th day of August 2023, a true and correct copy of the
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`foregoing document was filed electronically with the Clerk of Court using the CM/ECF system.
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`As of this date, all counsel of record have consented to electronic service and are being served
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`with a copy of this document through the Court’s CM/ECF system.
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`/s/ Robert W. Unikel
`Robert W. Unikel
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`Case 6:22-cv-00031-ADA Document 127 Filed 08/18/23 Page 11 of 11
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(g), counsel for the parties to this motion conferred in a good-
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`faith effort on August 14, 2023 to resolve the matter presented herein. Counsel for Plaintiff opposes
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`the instant motion.
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`/s/ Robert W. Unikel
`Robert W. Unikel
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`10
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