Case 2:24-cv-00321-AWA-DEM Document 74 Filed 02/18/25 Page 1 of 21 PageID#
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
`
`Plaintiff,
`
`v.
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`
`SOUNDCLEAR TECHNOLOGIES LLC, §
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`§
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`§
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`§ Case No. 2:24-cv-00321-AWA-DEM
`§
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`§
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`§
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`§
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`§
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`§
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`GOOGLE LLC,
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`Defendant.
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`MEMORANDUM OF LAW IN SUPPORT OF DEFENDANT GOOGLE LLC’S
`MOTION TO STAY PENDING INTER PARTES REVIEW
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`

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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 2
`A.
`Stage of This Case ................................................................................................. 2
`B.
`IPR Proceedings ..................................................................................................... 3
`LEGAL STANDARD ........................................................................................................ 4
`III.
`IV. ARGUMENT ..................................................................................................................... 5
`A.
`The stage of the litigation strongly favors a stay. .................................................. 5
`B.
`A stay would simplify the issues before the court. ................................................ 8
`C.
`A stay would not unduly prejudice SoundClear. ................................................. 12
`D.
`A stay will reduce the burden of litigation on the parties and on the court. ........ 15
`CONCLUSION ................................................................................................................ 15
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`V.
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`-i-
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`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Cases
`
`Audio MPEG, Inc. v. HP Co.,
`No. 2:15cv73, 2015 U.S. Dist. LEXIS 126014 (E.D. Va. Sep. 15, 2015) ....................... passim
`
`buySAFE, Inc. v. Google, Inc.,
`No. 3:13cv781-HEH, 2014 U.S. Dist. LEXIS 83139 (E.D. Va. June 16, 2014) .....................12
`
`Centripetal Networks, Inc. v. Cisco Systems, Inc.,
`No. 2:18cv94, 2019 U.S. Dist. LEXIS 231216 (E.D. Va. Feb. 25, 2019) .....................7, 10, 11
`
`Centripetal Networks, Inc. v. Palo Alto Networks,
`No. 2:21-cv-00137-EWH, ECF No. 317 (E.D. Va. Nov. 7, 2022) ..........................9, 10, 11, 14
`
`Centripetal Networks, LLC v. Keysight Techs., Inc.,
`No. 2:22-CV-00002, 2023 WL 5127163 (E.D. Va. Mar. 20, 2023) ................................5, 7, 10
`
`Health Diagnostic Laboratory, Inc. v. Boston Heart Diagnostics Corporation,
`No. 3:14-cv-796-HEH, 2015 U.S. Dist. LEXIS 199061 (E.D. Va. Feb. 4,
`2015) ......................................................................................................................................6, 7
`
`Indivior Inc. v. Dr. Reddy’s Labs., S.A.,
`930 F.3d 1325 (Fed. Cir. 2019)..................................................................................................9
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................4
`
`Limelight Networks, Incorporated v. XO Communications, LLC,
`No. 3:15-cv-720-JAG, ECF No. 451 (E.D. Va. Apr. 7, 2017) ................................................14
`
`PersonalWeb Techs., LLC v. Apple Inc.,
`69 F. Supp. 3d 1022 (N.D. Cal. 2014) .......................................................................................8
`
`Sec. First Innovations, LLC v. Google LLC,
`No. 2:23-cv-97, 2024 U.S. Dist. LEXIS 11251 (E.D. Va. Jan. 19, 2024) ....................... passim
`
`Sec. First Innovations, LLC v. Google LLC,
`No. 2:23-cv-97, 2024 U.S. Dist. LEXIS 223484 (E.D. Va. Dec. 10, 2024) ..................5, 11, 15
`
`Sharpe Innovations, Inc. v. T-Mobile USA, Inc.,
`No. 2:17-cv-351, 2018 U.S. Dist. LEXIS 240665 (E.D. Va. Jan. 10, 2018) .........................4, 9
`
`In re TLI Commc’ns LLC, Patent Litig.,
`MDL No. 1:14md2534, 2014 U.S. Dist. LEXIS 182206 (E.D. Va. Aug. 11,
`2014) ................................................................................................................................6, 8, 13
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`Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd.,
`No. 2:14cv217, 2014 U.S. Dist. LEXIS 207248 (E.D. Va. Nov. 18, 2014) ................5, 6, 7, 13
`
`Versata Software, Inc. v. Callidus Software, Inc.,
`771 F.3d 1368 (Fed. Cir. 2014), vacated as moot, 780 F.3d 1134 (Fed. Cir.
`2015) ..........................................................................................................................................9
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)........................................................................................ passim
`
`Statutes
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`28 U.S.C. § 1404(a) .........................................................................................................................2
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`35 U.S.C. § 101 ................................................................................................................................2
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`35 U.S.C. § 102 ................................................................................................................................3
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`35 U.S.C. § 103 ................................................................................................................................3
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`35 U.S.C. §§ 311-319 ........................................................................................................3, 4, 9, 14
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`Other Authorities
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`37 C.F.R. § 42.107(b) ......................................................................................................................3
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`37 C.F.R. § 42.108(a).......................................................................................................................4
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`77 Fed. Reg. 48,680-01 (Aug. 14, 2012) .........................................................................................5
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`I.
`
`INTRODUCTION
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`Google LLC (“Google”) moves this Court to stay this case. Google has filed petitions with
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`the U.S. Patent & Trademark Office (“PTO”) seeking inter partes review (“IPR”) of two of the
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`three patents that Plaintiff SoundClear Technologies LLC (“SoundClear”) has asserted in this
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`case.1 Congress created the IPR procedure through the America Invents Act as a streamlined
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`process for the PTO to reconsider and cancel patent claims that are anticipated by, or rendered
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`obvious over, the prior art. Litigating this case while the PTO is considering Google’s IPRs means
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`the parties and the Court may expend significant time and resources on issues that may be rendered
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`moot by the IPRs.
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`This Court considers three factors when considering a stay, all of which favor staying this
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`case pending Google’s IPRs. First, this case is still at its infancy: No trial date has been set, fact
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`discovery has not been started, no depositions have been taken, and the claim construction process
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`has not taken place. The early stage of this litigation strongly favors a stay.
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`Second, staying this matter would simplify the issues before the Court. The PTO’s decision
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`on the pending IPRs is highly likely to simplify this litigation because the PTO will likely
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`invalidate asserted claims. Also, regardless of their outcome, the IPR proceedings will result in
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`additional intrinsic record (e.g., findings regarding the scope of the claims from the Patent and
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`Trademark Appeals Board (“PTAB”), which will adjudicate the IPR petitions). That additional
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`intrinsic evidence will help focus, inform, and simplify claim construction disputes in this case.
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`Third, imposing a stay would not unduly prejudice SoundClear. A non-practicing entity
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`(“NPE”) like SoundClear cannot show the type of undue prejudice that would favor denying a stay
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`
`1 SoundClear asserts U.S. Patent Nos. 9,031,259 (the “’259 patent”); 9,070,374 (the “’374 patent”);
`and 9,804,819 (the “’819 patent”) (collectively, the “Asserted Patents”). Google has filed IPR
`petitions against the ’259 and ’374 patents.
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`-1-
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`because it does not directly compete with Google. As such, it will not be unduly prejudiced by
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`awaiting the PTAB’s resolution. The availability of monetary damages would provide sufficient
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`relief that can be determined regardless of a stay, and SoundClear limits its requested relief to
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`monetary damages in its Complaint. Courts in this District have entered stays based on similar
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`facts as recently as last year. See, e.g., Sec. First Innovations, LLC v. Google LLC, No. 2:23-cv-
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`97, 2024 U.S. Dist. LEXIS 11251, at *2 (E.D. Va. Jan. 19, 2024) (“SFI I ”). The same result is
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`warranted here.
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`The parties met and conferred on this Motion, and SoundClear has confirmed that it
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`opposes the Motion. Because the IPR proceedings may significantly narrow the scope of this case
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`and thus conserve judicial and party resources, Google respectfully moves the Court to stay this
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`case during the pendency of the IPR proceedings.
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`II. BACKGROUND
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`A.
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`Stage of This Case
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`SoundClear filed a Complaint against Google alleging that Google infringes the Asserted
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`Patents. Dkt. 1. On August 5, 2024, Google moved to dismiss from this case the ’374 patent
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`(challenged via IPR petition), because those claims are patent ineligible under 35 U.S.C. § 101,
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`and the ’819 patent (not challenged via IPR petition), because SoundClear failed to state a plausible
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`claim for direct infringement of those claims.2 Dkt. 14. On November 4, 2024, Google moved to
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`transfer to the Northern District of California under 28 U.S.C. § 1404(a) because relevant party
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`and non-party witnesses reside in that district, and none reside anywhere in Virginia. Dkt. 39. After
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`briefing closed on Google’s motion to transfer, SoundClear moved to conduct venue discovery.
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`Dkt. 70.
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`2 Google also moved to dismiss SoundClear’s implausible willful infringement allegations.
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`-2-
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`Google’s motions to dismiss and to transfer, and SoundClear’s motion to conduct venue
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`discovery are all currently pending. Fact discovery has not opened, no written discovery requests
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`have been promulgated, no subpoenas have been issued, and no depositions have been taken or
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`noticed. No claim construction terms or proposed constructions have been formally exchanged,
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`and no claim construction briefing has been filed. No trial date has been set.
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`B.
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`IPR Proceedings
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`An IPR is a procedure for challenging the validity of a patent with the PTO. See 35 U.S.C.
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`§§ 311-319. To initiate an IPR proceeding, a party files a petition with the PTAB, asking the PTAB
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`to invalidate one or more claims of a patent. An IPR petition requests that one or more claims of a
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`patent be canceled as unpatentable under 35 U.S.C. § 102 (novelty) or 35 U.S.C. § 103
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`(obviousness). 35 U.S.C. § 311(b). The PTAB will authorize review of the patent claims if “there
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`is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). If IPR is instituted, the PTAB must execute a final
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`written decision within a year, but that deadline can be extended by six months for “good cause.”
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`35 U.S.C. § 316.
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`Google did not wait the full year allowed by statute to file its IPRs. 35 U.S.C. § 315(b).
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`Instead, within approximately eight months of SoundClear serving its Complaint on June 3, 2024,
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`Google filed its IPR petitions. Dkt. 11 ⁋ 1; Ex. 1 (’259 Patent IPR Petition); Ex. 2 (’374 Patent IPR
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`Petition). Google’s IPR petitions seek cancellation of all twenty claims of the ’259 patent and all
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`fifteen claims of the ’374 patent. Ex. 1; Ex. 2.
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`Following Google’s IPR petitions, SoundClear has the option of filing a preliminary
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`response to each IPR petition within three months of the notice of filing date. See 35 U.S.C. § 313;
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`37 C.F.R. § 42.107(b) (“A patent owner may expedite the proceeding by filing an election to waive
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`the patent owner preliminary response.”). The PTAB has three months after the preliminary
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`response is filed to decide whether to institute IPR proceedings. See 35 U.S.C. § 314. If IPR
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`proceedings are instituted, all challenged claims will be reviewed. See 37 C.F.R. § 42.108(a). Thus,
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`the PTAB will issue its decision on whether to institute the IPRs and review all challenged claims
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`about six months from the notice of filing date—likely by August 2025.
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`Should the PTAB choose to institute review, the IPRs will proceed to a “trial” phase, and
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`the PTAB will issue a final written decision within one year of institution, absent extenuating
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`circumstances, making the total pendency of the IPR proceedings about 18 months.3 See 35 U.S.C.
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`§ 316(a)(11). If Google’s petitions are successful in whole or in part, some or all of the claims of
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`the ’259 and ’374 patents will be canceled. Thus, the IPR proceedings will last between 6 and 18
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`months depending on a number of factors, including whether SoundClear waives its preliminary
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`response, whether the PTAB institutes the IPRs, and whether the PTAB grants any extensions.
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`III. LEGAL STANDARD
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`“The power to stay proceedings is incidental to the power inherent in every court to control
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`disposition of the causes on its docket with economy of time and effort for itself, for counsel, and
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`for litigants.” SFI I, 2024 U.S. Dist. LEXIS 11251, at *4 (citing Landis v. N. Am. Co., 299 U.S.
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`248, 254 (1936)). When an IPR petition is filed, the decision to stay district court proceedings “is
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`left to the district court’s discretion.” Id. (quoting Sharpe Innovations, Inc. v. T-Mobile USA, Inc.,
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`No. 2:17-cv-351, 2018 U.S. Dist. LEXIS 240665, at *5 (E.D. Va. Jan. 10, 2018)). ”When
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`determining whether to stay patent litigation pending IPR, district courts consider the following
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`three factors:
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`(1) the stage of the litigation;
`(2) whether the stay would simplify the issues before the court; and
`(3) whether the stay would unduly prejudice the nonmoving party.”
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`3 In practice, due to the availability of extensions, the PTAB may take up to 18 months to issue a
`final determination.
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`Id. (citing Centripetal Networks, LLC v. Keysight Techs., Inc., No. 2:22-CV-00002, 2023 U.S.
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`Dist. LEXIS 142014, at *8 (E.D. Va. Mar. 20, 2023) (“Keysight”) (collecting cases)). “However,
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`‘these factors . . . are not exclusive, and the court must decide based on the totality of the
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`circumstances.’” Sec. First Innovations, LLC v. Google LLC, No. 2:23-cv-97, 2024 U.S. Dist.
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`LEXIS 223484, at *4-5 (E.D. Va. Dec. 10, 2024) (“SFI II”) (citations omitted). As part of the
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`totality of the circumstances, “[w]hen deciding whether to grant a stay in a patent litigation, some
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`courts in this district have assessed whether the stay ‘will reduce the burden of litigation on the
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`parties and on the court.’” Id. at *10-11.
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`IV. ARGUMENT
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`The purpose of the statute establishing the IPR proceedings was “to establish a more
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`efficient and streamlined patent system that will improve patent quality and limit unnecessary and
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`counterproductive litigation costs.” Audio MPEG, Inc. v. HP Co., No. 2:15cv73, 2015 U.S. Dist.
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`LEXIS 126014, at *5 (E.D. Va. Sep. 15, 2015) (quoting 77 Fed. Reg. 48,680-01 (Aug. 14, 2012)).
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`Staying litigation pending IPR furthers this goal of “limit[ing] unnecessary and counterproductive
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`litigation costs.” Id. Consequently, courts in this District have commonly exercised their discretion
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`to stay cases pending the PTAB’s decision to institute IPR proceedings. See, e.g., SFI I, 2024 U.S.
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`Dist. LEXIS 11251, at *7-8. Not only would granting a stay further the goals contemplated by
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`Congress, but, as discussed below, all three factors favor a stay in this case.
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`A.
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`The stage of the litigation strongly favors a stay.
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`“A stay pending IPR at the early stages of a lawsuit has the potential to save ‘a significant
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`amount of time and effort by all parties involved through a simplification of the issues presented.’”
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`Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd., No. 2:14cv217, 2014 U.S. Dist. LEXIS
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`207248, at *5-6 (E.D. Va. Nov. 18, 2014) (“VIS”). Thus, courts in this District have held that an
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`early stage of litigation “heavily favors” a stay. Id. at *6 (quoting VirtualAgility Inc. v.
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`Salesforce.com, Inc., 759 F.3d 1307, 1317 (Fed. Cir. 2014)4 (for a motion to stay pending CBM
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`review, stage of litigation “factor heavily favors Defendants” where “there remained eight months
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`of fact discovery, the joint claim construction statements had yet to be filed, and jury selection was
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`a year away”)).
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`In VIS, the court explained that the case was “at an early stage: discovery has barely
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`begun—discovery is far from ‘complete’—and no trial date has been set.” Id. Therefore, the court
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`held that “the early stage of this litigation ‘heavily favors’ a stay.” Id. (emphasis added).
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`Likewise, in Audio MPEG, the court explained that discovery had “not begun in this case.
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`Additionally, no trial date has been set, the Court has not set a Markman hearing, and the Court
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`has not set a scheduling conference. Therefore, this case remains in its infancy, which strongly
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`supports granting a stay.” 2015 U.S. Dist. LEXIS 126014, at *11 (emphasis added); see also id. at
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`*15 (“The fact that this case is in such an early stage heavily favors granting a stay.”) (emphasis
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`added).
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`The same was true in Health Diagnostic Laboratory, Inc. v. Boston Heart Diagnostics
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`Corporation, No. 3:14-cv-796-HEH, 2015 U.S. Dist. LEXIS 199061, at *5 (E.D. Va. Feb. 4,
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`2015). There, the court had “not entered a scheduling order, scheduled this matter for a pretrial
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`conference, nor scheduled a trial date or Markman hearing. Additionally, no discovery has taken
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`place between the parties.” Thus, the case remained “in the earliest stages” and the stage of the
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`litigation factor was “particularly compelling.” Id. (emphasis added).
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`4 VirtualAgility is pertinent to whether to stay this case pending IPR even though VirtualAgility
`involved a related, but different, administrative review of patents called a covered business method
`(CBM) review. In re TLI Commc’ns LLC, Patent Litig., MDL No. 1:14md2534, 2014 U.S. Dist.
`LEXIS 182206, at *6 (E.D. Va. Aug. 11, 2014) (“[D]efendants’ supplemental brief correctly points
`out that VirtualAgility is pertinent to the instant matter even though that case involved CBM review
`by the PTO, rather than inter partes review (IPR), as involved here.”).
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`Similar to VIS, Audio MPEG, and Health Diagnostic, this case is at its infancy. Fact
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`discovery has not opened. No infringement or invalidity contentions have been served, no written
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`discovery requests have been promulgated, no documents have been produced, no subpoenas have
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`been issued, and no depositions have been taken or noticed. No claim construction terms or
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`proposed constructions have been formally exchanged, and no claim construction briefing has been
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`filed. No trial date has been set. See generally II.A above. Thus, just like those cases, the stage of
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`the litigation factor here strongly favors a stay. See also Keysight, 2023 U.S. Dist. LEXIS 142014,
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`at *9 (“The stage of the litigation weighs in favor of a stay when the motion is filed early in the
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`proceedings—before a trial date or Markman hearing is set—and discovery has not been
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`substantially completed.”).
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`It is worth noting that the analysis under this factor focuses on the stage of the litigation
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`and not how long the case has been pending. In Keysight, for example, the court explained:
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`While the Court recognizes that this case has been pending for over a year through no fault
`of the parties, the matter is still in its infancy. No scheduling order has been entered and
`the parties have yet to begin discovery. Therefore, the stage of litigation factor favors
`issuing a stay.
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`2023 U.S. Dist. LEXIS 142014, at *9-10 (emphasis added). Similarly, in Centripetal Networks,
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`Inc. v. Cisco Systems, Inc., the court explained:
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`Although Plaintiff filed its action one year ago, there is a pending Motion to Dismiss.
`Therefore, the Court has not yet entered a scheduling order for discovery, a Markman
`hearing has not been set, and the case has not been set for trial. Accordingly, this matter is
`still in the early stages of litigation and this factor weighs in favor of granting a stay.
`
`No. 2:18cv94, 2019 U.S. Dist. LEXIS 231216, at *6-7 (E.D. Va. Feb. 25, 2019) (“Cisco”)
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`(emphasis added). Even if this factor considered the time between service and the motion to stay,
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`the present case has been pending far shorter than Keysight and Cisco. Regardless of how
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`measured, therefore, this factor strongly favors a stay.
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`-7-
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`The reason for staying the case at the outset is simple and compelling: where, as here, the
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`parties have just begun litigating, a stay will conserve both the Court’s and the parties’ time and
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`resources litigating claims that may eventually be rendered moot. Accordingly, the stage of the
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`litigation factor is an important factor that strongly favors a stay.
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`B.
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`A stay would simplify the issues before the court.
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`The simplification factor favors a stay. “When determining whether to grant a stay pending
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`IPR review, ‘the critical question is not whether PTAB review would simplify the issues in
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`question, but whether a stay of this action would do so.’” Audio MPEG, 2015 U.S. Dist. LEXIS
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`126014, at *7 (citations omitted).
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`A stay here will simplify the issues regardless of the outcome of the IPRs. PersonalWeb
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`Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1027-28 (N.D. Cal. 2014) (“Either the claims,
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`already found reasonably likely to be invalid, will become moot, or the Court will have the benefit
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`of the PTAB’s findings. Under both outcomes, the issues in question and trial of the case will be
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`simplified.”).
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`If Google’s IPR petitions are not instituted, the case will still be simplified. In SFI I, this
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`court recently explained: “should the PTAB decide not to institute Google’s petitions, ‘statements
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`made in the course of an IPR proceeding concerning the patent in issue may also add to the patent’s
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`prosecution history, which could assist this Court’s claim construction analysis.’” SFI I, 2024 U.S.
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`Dist. LEXIS 11251, at *8 n.1 (quoting In re TLI Commc’ns LLC, Patent Litig., No. MDL No.
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`1:14md2534, 2014 U.S. Dist. LEXIS 182206, at *8 (E.D. Va. Aug. 11, 2014)). The court went on
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`to conclude: “Thus, any possible outcome of Google’s IPR petitions will—albeit to varying
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`degrees—simplify the issues before the Court.” Id.
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`If Google’s IPR petitions are instituted, the case will be even more simplified. If Google’s
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`IPR petitions are successful, then the claims of the ’259 and ’374 patent will be cancelled,
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`simplifying the case enormously by mooting Counts I and II. Dkt. 1 at 8-17. This is because “when
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`a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending
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`litigation in which the claims are asserted becomes moot.” Indivior Inc. v. Dr. Reddy’s Labs., S.A.,
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`930 F.3d 1325, 1349 (Fed. Cir. 2019). If Google’s IPR petitions are partly successful, then the
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`scope of the litigation will still be narrowed and simplified as the canceled claims will no longer
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`be in the case.
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`Even if Google’s IPR petitions are instituted but ultimately unsuccessful, the case will still
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`be simplified because of the estoppel provisions in 35 U.S.C. § 315(e)(2). See also Audio MPEG,
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`2015 U.S. Dist. LEXIS 126014, at *9 (E.D. Va. Sep. 15, 2015) (“Defendant will be estopped from
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`asserting invalidity on any ground it raised or reasonably could have raised during an IPR
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`proceeding.”).
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`As in SFI I, any possible outcome of Google’s IPR petitions here will likely result in
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`simplifying the issues before the Court to varying degrees. This simplification strongly favors a
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`stay.
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`SoundClear may dispute this factor because Google has petitioned for IPR for only two of
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`the three asserted patents. Courts in this District have rejected similar arguments explaining: “there
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`can still be simplification when some claims are not challenged or when the proceedings do not
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`address every invalidity defense.” Centripetal Networks, Inc. v. Palo Alto Networks, Inc., No. 2:21-
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`cv-00137 (RCY), 2022 U.S. Dist. LEXIS 36457, at *13-14 (E.D. Va. Mar. 1, 2022) (“Palo Alto
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`Networks”) (citations omitted); see also Sharpe, 2018 U.S. Dist. LEXIS 240665, at *8 (“[A] stay
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`can still be warranted when an IPR proceeding does not address each and every claim or defense.”);
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`Audio MPEG, 2015 U.S. Dist. LEXIS 126014, at *8 (“[T]here still can be a simplification of issues
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`when only some, but not all, of the asserted claims are brought before the PTAB.”); Versata
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`Software, Inc. v. Callidus Software, Inc., 771 F.3d 1368, 1371 (Fed. Cir. 2014), vacated as moot,
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`780 F.3d 1134 (Fed. Cir. 2015) (noting that “stays can be warranted even when a CBM proceeding
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`does not address all asserted patents, claims, or invalidity defenses”); Keysight, 2023 U.S. Dist.
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`LEXIS 142014, at *11-12 (“[A] stay simplifies matters when it allows the Court to avoid the need
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`to have the case proceed on two different schedules—i.e. holding two different trials and
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`conducting pretrial proceedings in separate sequence.”).
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`Palo Alto Networks is instructive. In that case, the plaintiff accused defendants of infringing
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`thirteen patents. 2022 U.S. Dist. LEXIS 36457, at *3. The PTAB granted institution for five
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`patents, denied institution for six patents, and had yet to decide for two patents. Id. at *5. The court
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`rejected plaintiff’s argument that a stay would not result in simplification, holding instead that “the
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`simplification factor weighs in favor of a stay.” Id. at *13-14. The court recognized that the PTAB
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`had denied institution for some of the patents, which would thus need to be litigated no matter
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`what, but nonetheless explained that: “. . . PTAB review has the potential to greatly streamline this
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`action and reduce the expense of this litigation. Even if the PTAB were to only review the five
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`petitions currently instituted, it would still simplify the issues in this action.” Id. at *14 (emphasis
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`added). After considering the other factors, the court concluded: “Therefore, the Court will grant
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`the Motion to Stay.” Id. at *17; see also Centripetal Networks, Inc. v. Palo Alto Networks, No.
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`2:21-cv-00137-EWH, ECF No. 317, *3 (E.D. Va. Nov. 7, 2022) (denying motion to lift stay as to
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`non-instituted patents because “maintaining the stay until the resolution of IPR proceedings will
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`allow the Court to address the patent claims as a convenient unit”).
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`Cisco is also instructive. In that case, the defendant filed IPR petitions for “nine of the
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`eleven Asserted Patents” challenging “the validity of 272 of the 321 disputed claims . . . .” 2019
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`U.S. Dist. LEXIS 231216, at *5. On the simplification factor, the court explained: “Although the
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`IPR has not granted review on all of the claims in dispute in this matter, granting a stay will likely
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`simplify the issues . . . .” Id. at *7 (emphasis added). Even though the defendant had not challenged
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`49 asserted claims and had not challenged two of the asserted patents at all, the court nonetheless
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`held that “as the PTAB has now granted review of petitions that deal with approximately one-third
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`of the claims disputed in the Asserted Patents, staying the case until after these claims, and
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`potentially others, are reviewed weighs heavily in favor of granting [the] motion to stay.” Id. at *8
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`(emphasis added). After considering the other factors, the court granted the defendant’s motion to
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`stay. Id. at *10.
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`SFI II is also instructive. In SFI II, the defendant filed IPR petitions for the claims of the
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`four asserted patents. 2024 U.S. Dist. LEXIS 223484, at *3-4. The PTAB granted institution as to
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`three of the patents, but denied institution for the last patent. Id. at *4. The plaintiff moved to lift
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`a stay as to that patent. Id. The court explained that “even if IPR will not impact all the disputed
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`patents, the fact that a portion of the patents are under IPR will simplify the issues and supports a
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`stay of all pending claims before the court.” Id. at *7 (emphasis added). Thus, the court concluded
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`that the simplification “factor weigh[ed] in favor of maintaining the stay.” Id.
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`As in Palo Alto Networks, Cisco, and SFI II, that some of SoundClear’s claims (i.e., the
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`’819 patent) will be litigated regardless of the IPR outcome (or at least the Court will need to
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`decide Google’s motion to dismiss the ’819 patent) does not change the outcome that a stay is
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`warranted. In Palo Alto Networks, less than half of the patents were instituted, but the court still
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`found that the simplification factor favored a stay. In Cisco, the defendant had not filed IPR
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`petitions for two patents at all, but the court still found that the simplification factor favored a stay.
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`And in SFI II, the PTAB denied institution for a patent, but the court maintained the stay of the
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`whole case. In none of those cases did the fact that some claims would inevitably be litigated
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`change the outcome, and in all of those cases, the court found that the simplification factor favored
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`(or strongly favored) a stay. The same is true here: the simplification factor favors a stay.
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`C.
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`A stay would not unduly prejudice SoundClear.
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`The undue prejudice factor also favors a stay for three reasons. First, there is a well-
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`established rule that non-practicing entities like SoundClear cannot show undue prejudice. Second,
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`SoundClear has never sought injunctive relief, which undercuts any arguments about undue
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`prejudice from delay associated with a stay. Third, Google was diligent in filing its IPRs and
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`bringing this Motion.
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`The starting point here is the well-established rule that delay by itself does not amount to
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`undue prejudice. buySAFE, Inc. v. Google, Inc., No. 3:13cv781-HEH, 2014 U.S. Dist. LEXIS
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`83139, at *20 (E.D. Va. June 16, 2014) (“[T]he potential for delay does not, by itself, establish
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`undue prejudice.”) (emphasis original); see also Audio MPEG, 2015 U.S. Dist. LEXIS 126014, at
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`*12 (“Delays based on statutory frameworks, such as those pursuant to IPR proceedings under
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`AIA § 18(b), do not normally cause undue prejudice.”). Rather, “[w]hether the patentee will be
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`unduly prejudiced by a stay in the district court litigation . . . focuses on the patentee’s need for an
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`expeditious resolution of its claim.” SFI I, 2024 U.S. Dist. LEXIS 11251, at *9 (quoting
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`VirtualAgility, 759 F. 3d at 1318). “To show undue prejudice, a patentee must demonstrate that
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`monetary damages will be insufficient to remedy their losses.” Id at *9-10. SoundClear cannot do
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`so for two reasons.
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`First, the general rule is that NPEs cannot show undue prejudice based on a stay pending
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`IPR:
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`As a general rule, a plaintiff that does not practice the patent “cannot