Case 2:24-cv-00321-AWA-DEM Document 77 Filed 03/04/25 Page 1 of 28 PageID#
`1627
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
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`Case No. 2:24-cv-00321-AWA-DEM
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`JURY TRIAL DEMANDED
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`SOUNDCLEAR TECHNOLOGIES LLC,
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`Plaintiff,
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`
`v.
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`GOOGLE LLC,
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`Defendant.
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`
`PLAINTIFF SOUNDCLEAR’S RESPONSE BRIEF IN OPPOSITION TO
`DEFENDANT’S MOTION TO STAY PROCEEDINGS
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`

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`Case 2:24-cv-00321-AWA-DEM Document 77 Filed 03/04/25 Page 2 of 28 PageID#
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`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................................. 1
`
`LEGAL STANDARD ......................................................................................................... 7
`
`FACTS ................................................................................................................................ 8
`
`ARGUMENT ...................................................................................................................... 9
`
`A.
`
`B.
`
`Google’s Motion is Legally Deficient .................................................................... 9
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`The Balance of Factors Weigh Against a Stay in This Matter ............................. 10
`
`1.
`
`2.
`
`3.
`
`4.
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`This Action Has Progressed, but Only in Google’s Favor........................ 10
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`A Stay Would Not Simplify the Matters at Issue ..................................... 12
`
`Google’s IPR Petitions and Stay Request are Delay Tactics That Would
`Unfairly Prejudice SoundClear ................................................................. 16
`
`A Stay in This Case Will Not Reduce its Burden on the Parties or This
`Court ......................................................................................................... 20
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`CONCLUSION ................................................................................................................. 21
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`
`
`i
`
`I.
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`II.
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`III.
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`IV.
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`V.
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`Case 2:24-cv-00321-AWA-DEM Document 77 Filed 03/04/25 Page 3 of 28 PageID#
`1629
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`3G Licensing, S.A. v. Lenovo Grp. Ltd.,
`No. 17-84-LPS, 2019 U.S. Dist. LEXIS 232215 (D. Del. Apr. 16, 2019) ................................1
`
`Affinity Labs of Tex. v. Apple Inc.,
`No. 09-04436 CW, 2010 U.S. Dist. LEXIS 50974 (N.D. Cal. Apr. 29, 2010)........................19
`
`Allvoice Devs. US, LLC v. Microsoft Corp.,
`No. 6:09-cv-366, 2010 U.S. Dist. LEXIS 148397 (E.D. Tex. June 4, 2010) ..........................19
`
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001)................................................................................................13
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019 (PTAB Mar. 20, 2020) ........................................................................6, 15, 16
`
`Arbor Glob. Strategies LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-00333-JRG-RSP, 2020 U.S. Dist. LEXIS 201440 (E.D. Tex.
`Aug. 10, 2020) .........................................................................................................................14
`
`Audio MPEG, Inc. v. Hewlett-Packard Com.,
`No. 2:15cv73, 2015 U.S. Dist. LEXIS 126014 (E.D. Va. Sep. 21, 2015) ...............................17
`
`Avanos Med. Sales, LLC v. Medtronic Sofamor Danek USA, Inc.,
`No. 2:19-cv-02754-JPM-tmp, 2021 U.S. Dist. LEXIS 258735 (W.D. Tenn.
`Oct. 8, 2021) ............................................................................................................................16
`
`Aventis Pharma Deutschland GMBH v. Lupin Ltd.,
`403 F. Supp. 2d 484 (E.D. Va. 2005) ........................................................................................8
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..................................................................................................2
`
`Centripetal Networks, LLC v. Keysight Techs., Inc.,
`Civil Action No. 2:22-CV-00002, 2023 U.S. Dist. LEXIS 142014 (E.D. Va.
`Mar. 20, 2023)..........................................................................................................................11
`
`Clinton v. Jones,
`520 U.S. 681 (1997) ...........................................................................................................6, 8, 9
`
`Cobalt Boats, LLC v. Sea Ray Boats, Inc.,
`No. 2:15-cv-21, 2017 U.S. Dist. LEXIS 225428 (E.D. Va. Mar. 20, 2017) ..................7, 17, 18
`
`
`
`ii
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`

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`Cobalt Boats v. Sea Ray Boats, Inc.,
`No. 2:15cv21, 2015 U.S. Dist. LEXIS 67258 (E.D. Va. May 21, 2015) .................................17
`
`Cont’l Auto. Sys., Inc. v. Hamaton Auto. Tech. Co. Ltd. et al.,
`2:16-cv-00226, ECF No. 63 (E.D. Va. Feb. 7, 2017) ..............................................................13
`
`DNT, LLC v. Sprint Spectrum, LP,
`750 F. Supp. 2d 616 (E.D. Va. 2010) ........................................................................................9
`
`EHS Lens Phil., Inc. v. Essilor Int’l Compagnie Generale D’Optique,
`No. 3:16-cv-00563-JAG, 2016 U.S. Dist. LEXIS 198901 (E.D. Va. Sept. 22,
`2016) ....................................................................................................................................6, 14
`
`Facet Techs., LLC v. Lifescan, Inc.,
`No 2:22-cv-01717-MCS, 2023 U.S. Dist. LEXIS 112860 (C.D. Cal. May 1,
`2023) ............................................................................................................................7, 8, 9, 13
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009)..................................................................................................7
`
`Gibbs v. Plain Green LLC,
`331 F. Supp. 3d 518 (E.D. Va. 2018) ......................................................................................17
`
`Grecia v. Mastercard, Inc.,
`No. 16-cv-9691 (RJS), 2017 U.S. Dist. LEXIS 233042 (S.D.N.Y. Apr. 3,
`2017) ........................................................................................................................................11
`
`Longhorn HD LLC v. Netscout Sys.,
`No. 2:20-CV-00349, 2022 U.S. Dist. LEXIS 2852 (E.D. Tex. Jan. 6, 2022) ..........................17
`
`Maxell Ltd. v. Apple Inc.,
`No. 5:19-CV-00036, 2020 U.S. Dist. LEXIS 257531 (E.D. Tex. Apr. 27,
`2020) ........................................................................................................................................17
`
`Nanoco Techs. Ltd. v. Samsung Elecs. Co., Ltd.,
`No. 2:20-CV-00038-JRG, 2021 U.S. Dist. LEXIS 263618 (E.D. Tex. Jul. 1,
`2021) ........................................................................................................................................15
`
`Osmose, Inc. v. Arch Chems., Inc.,
`No 2:10-cv-108, 2011 U.S. Dist. LEXIS 92710 (E.D. Va. Jan. 28, 2011) ................................7
`
`PPG Indus. Inc. v. Guardian Indus. Corp.,
`75 F.3d 1558 (Fed. Cir. 1996)..................................................................................................20
`
`Remington Arms Co. v. Modern Muzzleloading, Inc.,
`No. 2:97CV00660, 1999 U.S. Dist. LEXIS 25613 (M.D.N.C. Feb. 9, 1999) ...........................2
`
`
`
`iii
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`RetailMeNot, Inc. v. Honey Sci. LLC,
`No. 18-937-CFC-MPT, 2020 U.S. Dist. LEXIS 11210 (D. Del. Jan. 23, 2020) .......................6
`
`Sec. First Innovations, LLC v. Google LLC,
`No. 2:23-cv-97, 2024 U.S. Dist. LEXIS 11251 (E.D. Va. Jan. 19, 2024) .................1, 3, 13, 15
`
`Segin Sys., Inc. v. Stewart Title Guaranty Co.,
`30 F. Supp. 3d 476 (E.D. Va. 2014) ............................................................................12, 14, 20
`
`Smart Mobile Techs. LLC v. Samsung Elecs. Co. Ltd., et al.,
`No 6:21-cv-00701-ADA, Dkt. No. 115 (W.D. Tex. Aug. 8, 2023) .........................................16
`
`Sound View Innovations v. Hulu,
`No. LA CV17-04146 ...............................................................................................................13
`
`Sunbeam Prods. v. Hamilton Beach Brands, Inc.,
`No. 3:09cv-791, 2010 U.S. Dist. LEXIS 45654 (E.D. Va. May 10, 2010) ...........................6, 9
`
`Tessera Advanced Techs., Inc. v. Samsung Elecs. Co.,
`No. 2:17-CV-00671-JRG, 2018 U.S. Dist. LEXIS 120999 (E.D. Tex. July 19,
`2018) ........................................................................................................................................18
`
`Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp.,
`390 F. Supp. 3d 665 (E.D. Va. 2019) ........................................................................................3
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................8
`
`Viskase Corp. v. Am. Nat. Can Co.,
`261 F.3d 1316 (Fed. Cir. 2001)..................................................................................................7
`
`Williford v. Armstrong World Indus., Inc.,
`715 F.2d 124 (4th Cir. 1983) ...................................................................................................20
`
`Wonderland Switz. AG v. Britax Child Safety, Inc.,
`No. 0:19-cv-02475-JMC, 2020 U.S. Dist. LEXIS 226315 (D.S.C. Dec. 2,
`2020) ..............................................................................................................................3, 14, 20
`
`Statutes
`
`28 U.S.C. § 1404(a) .........................................................................................................................8
`
`35 U.S.C. § 314 ..............................................................................................................................14
`
`35 U.S.C. § 315(e)(2) .....................................................................................................................12
`
`Other Authorities
`
`Fed. R. Civ. P. 12(b)(6)....................................................................................................................8
`
`
`
`iv
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`

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`I.
`
`
`INTRODUCTION
`
`If Google’s motion is granted, this 2024-case will not likely begin to be litigated until
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`mid-to-late 2028. And not much will have been accomplished.
`
`Two facts alone render a stay inappropriate: Google’s delay in filing an Inter Partes
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`Review petition and the fact that those proceedings (the “IPR”) cannot possibly resolve all
`
`claims at issue in the case. Similar facts precluded a stay in 3G Licensing, S.A. v. Lenovo Grp.
`
`Ltd., No. 17-84-LPS, 2019 U.S. Dist. LEXIS 232215, at *2 (D. Del. Apr. 16, 2019) (opinion by
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`Christopher Burke, Mag. J.).
`
`But this case is even less appropriate for a stay than 3G. At least eight additional reasons
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`apply—each of which also differentiates this case from all those that Google cites.
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`First, 3G involved fewer than all claims of the same patent subject to IPR. This case
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`involves fewer than all patents. The patents in this case are also unrelated to one another. The
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`remaining ’819 patent (volume control) is unrelated to either the ’374 patent (status notification)
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`or ’259 patent (noise filtering). There is thus much less overlap between trial court and IPR
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`proceedings in this action. For at least the ’819 patent, there will be zero overlap; and the counts
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`addressing it will proceed regardless—either now or in an untold amount of time after the IPRs
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`(and related appeals) conclude.
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`Second, the IPRs will not resolve validity issues for even those two patents. Google will
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`attempt to reassert invalidity in this Court even if it loses. For example, Google already identified
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`one piece of product prior art that it will assert in this case in connection with the ’259 patent.
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`Google will, no doubt, argue that losing the ’259 patent IPR does not preclude that ground.
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`Google may make a similar second-run at the ’374 patent. In other words, even if Google loses
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`both IPRs, Google will ask this Court to nonetheless address validity all over again.
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`
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`1
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`Third, Google manipulated how this case has advanced. Google chose to raise two
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`separate, highly-fact-specific, dispositive issues that are rarely appropriate for decision at the
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`pleadings’ stage: (1) patent eligibility1 and (2) non-infringement.2 Google chose to address the
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`most substantive issues first. It chose to space the filling of its motions out, sequentially, over
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`time. It sought to obtain a quick ruling in its favor while also holding discovery by SoundClear at
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`bay. Google used the three months of intervening deadtime to its sole benefit. It conducted its
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`own investigations, identified its own witnesses, and prepared (and submitted to the Court) three
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`declarations of its own employees in support of a motion to transfer. Dkts. 38-47 (November 4,
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`2024). And Google investigated and “identified two categories of potential third-party witnesses”
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`supporting its case. Dkt. 39 at 18. Now that those records have developed against Google, it has
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`fallen back on the IPR/stay route. But even regardless of Google’s intent, there is no question
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`that the delay and status of the litigation resulted from Google’s motions.
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`Fourth, Google has not been forthcoming with this Court. It does not mention that it will
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`attempt to relitigate validity issues before this Court even if it fails at IPR. Nor does it mention
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`that the claim construction positions it adopted in IPR will contradict those it pursues in this
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`Court.3
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`Fifth, Google proposed no claim constructions in either of its IPRs—stating that claim
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`construction is not needed.4 And Google indicated that it may take a diametrically opposite
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`approach before this Court. For example, in its ’259 IPR Petition, Google asserted that it may—
`
`
`1 Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
`2 Remington Arms Co. v. Modern Muzzleloading, Inc., No. 2:97CV00660, 1999 U.S. Dist.
`LEXIS 25613, at *16 (M.D.N.C. Feb. 9, 1999).
`3 See Section IV.B.2 infra.
`4 Ex. 1, p. 4 (“No terms need construction to resolve the unpatentability issues in this
`Petition.”); Ex. 7, p. 5 (“No terms require express construction . . . .”).
`
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`
`2
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`

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`improperly—“raise indefiniteness and/or claim constructions in other forums.” Ex. 1, p. 4. If the
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`IPRs proceed on plain and ordinary meaning, and Google then attempts to obtain claim
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`constructions in this case, the statements made in the IPRs will only multiply and confuse the
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`issues in this proceeding. Each side will have to argue amongst Google’s inconsistent positions.
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`That approach would undermine the purpose for which IPRs were created.5
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`Sixth, Google is attempting to manipulate multiple jurisdictions in its favor. IPRs were
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`not created for one side to use as a strategic advantage.6
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`Seventh, Google’s delay in filing its IPRs is longer in this case than in 3G— 9 months
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`versus 7. 7
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`Eighth, Google’s proposal contravenes the bedrock of this District. Courts in the Eastern
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`District of Virginia (“EDVA”) epitomize the goal of Rule 1 of the Federal Rules of Civil
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`Procedure: a “just, speedy and inexpensive determination of every action and proceedings.” This
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`litigation has been progressing for more than nine months, eight months since the date of service.
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`The first through sixth points demonstrate strategic gamesmanship. Google would like to
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`proceed at the PTAB against two of the three patents in this case—where Google has nothing to
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`lose. But it would like this Court to stop SoundClear from proceeding on the ’819 patent—
`
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`5 The 2011 America Invents Act (“AIA”) created IPR as a supposedly more efficient and
`speedy process to resolve certain patent validity disputes in lieu of substantial investment in
`district court litigation. See Trs. of Columbia Univ. in the City of N.Y. v. Symantec Corp., 390
`F. Supp. 3d 665, 676 (E.D. Va. 2019).
`6 See Section IV.B.1 infra (regarding the filing of motions sequentially to forestall discovery).
`7 Wonderland Switz. AG v. Britax Child Safety, Inc., No. 0:19-cv-02475-JMC, 2020 U.S. Dist.
`LEXIS 226315, at *12-13 (D.S.C. Dec. 2, 2020) (“If a defendant desires a stay, it should
`endeavor to minimize prejudice to a plaintiff, by diligently conducting a prior art search, and
`then drafting and filing an inter partes review petition if it desires to do so.” (citing Signal IP,
`Inc. v. Ford Motor Co., No. 14-cv-13729, 2015 U.S. Dist. LEXIS 132322, at *16 (E.D. Mich.
`Sept. 30, 2015)).
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`3
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`knowing that patent to be beyond tenable challenge on validity grounds. And then Google will
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`attempt to reassert invalidity grounds for each of the patents in this Court regardless of the
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`outcome of the IPRs.
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`In short, Google’s IPR proceedings will not simplify this case at all. They will not
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`dispose of the case. Even if Google loses at IPR, it will raise some of the same arguments here.
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`And, contrary to all the cases Google cites, it may likely use the IPR proceedings to confuse
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`matters further—by attempting to entirely change its position on claim construction.
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`Each of the considerations above is relevant to the applicable legal factors relevant to
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`requests for a stay.
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`This case has proceeded well into substantive issues (factor 1). The Court is facing two
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`highly fact-specific, dispositive issues, which Google raised seven and three months ago,
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`respectively. The Court is also steeped in discovery related to the venue motion and testimony
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`Google also submitted months ago. It has not yet proceeded in a direction allowing SoundClear
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`discovery because of Google’s tactics. The IPRs, by comparison, have not even begun. The
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`PTAB has not even entered the routine notice-of-filing-date order. The PTAB will not likely
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`decide whether to institute either of Google’s IPRs until August 2025—five months from now.
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`Even then, given ongoing reorganization at the USPTO, substantial delays are almost
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`certain:
`
` “The whole organization we built is about to come tumbling down,” James T.
`Moore, a former PTAB judge and attorney with Buchanan Ingersoll & Rooney
`PC, told Law360. “It worries me.” Ex. 2, p. 1.
`
` “If a significant number of judges leave, it will affect the ability of PTAB to get
`its work done — on the statutory time frames that are set by Congress — in a
`high-quality way,” said Jessica Kaiser, a former PTAB judge, now with Perkins
`Coie. Id. p. 2.
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`
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`4
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`

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`And it is likely institution rates will drop. That will be a necessary result of the PTAB
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`losing judges:
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`Retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel said
`in response that if judges quit en masse the PTAB would need to focus on the “front
`end” in order to reduce its workload, namely, using its discretion to hear only the
`most important cases.
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`Ex. 3, p. 1 (emphasis added); see also id., p. 2 (former PTO director Kathi Vidal acknowledging
`
`similar potential delays and drops in institution rates). It will also be a direct result of the PTO
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`having withdrawn a 2022 memorandum that made discretionary denials difficult. Ex. 4.8 In
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`short, the likelihood that a given IPR will be instituted is as low as it has ever been. And the risk
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`of IPRs not being instituted constitutes a substantial risk to efficiency/prejudice. In such case, a
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`half-year stay will have provided no benefit—only delay and prejudice.
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`Even if the PTAB hypothetically institutes IPR, a merits decision for each patent would
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`not become final until approximately July – September 2028—at the earliest, taking into account
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`expected appeals. Under every circumstance, a stay would guarantee delaying resolutions of the
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`parties’ disputes. Staying this case would be contrary to the purpose of IPR because the parties
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`would obtain more efficient resolution in this Court. It will also be uniquely prejudicial in this
`
`instance, given Google’s history of not maintaining documents for litigation. See Section IV.B.3
`
`infra.
`
`In terms of simplification (factor 2), a stay will only add complexity and confusion—as
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`discussed above in connection with Google’s intent to raise inconsistent positions. Further,
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`“[d]etermining the extent to which an IPR would simplify the issues in question proves difficult
`
`
`8 See also Ex. 5, p. 1 (“[I]t it would make logical sense that that would result in more
`discretionary denials.”); Ex. 6, p. 1 (prior to the 2022 memo, “the board had often refused to
`review patents in cases where a final decision would be due after a district court trial began.”)
`
`
`
`5
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`

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`without knowing whether the PTAB will institute an IPR at all, let alone on what claims.” EHS
`
`Lens Phil., Inc. v. Essilor Int’l Compagnie Generale D’Optique, No. 3:16-cv-00563-JAG, 2016
`
`U.S. Dist. LEXIS 198901, at *5 (E.D. Va. Sept. 22, 2016). There is no basis to believe that a stay
`
`would simplify issues when the PTAB is at least six months away from a threshold decision
`
`about whether to institute Google’s IPR petitions at all. That is especially true in light of the
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`PTAB’s 2020 Fintiv decision, which established circumstances, similar to the ones in this case,
`
`under which the PTAB would deny institution in deference to first-filed district court litigation
`
`that is closer to resolution than a requested IPR. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, at
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`*2 (PTAB Mar. 20, 2020). A stay of the first-filed district court litigation would not simplify the
`
`issues in this case.
`
`In terms of prejudice (factor 3), Google’s approach would harm SoundClear in terms of
`
`creating a distinct procedural advantage.9 If granted, it will allow Google to proceed on the
`
`issues it chooses, in a forum where the only downside to Google is the filing fee. SoundClear, by
`
`contrast, will be blocked from advancing its claims on an unrelated patent that Google cannot
`
`invalidate. Further, this District is committed to the just and speedy resolution of cases. And
`
`courts denying stays routinely recognize the prejudice associated with delay. And none of those
`
`cases even involved the sequential delay tactics Google deployed in this case.
`
`Lastly, Google has not met its statutory burden to stay this case. Supreme Court
`
`precedent mandates that the “proponent of a stay bear[] the burden of establishing its need.”
`
`Clinton v. Jones, 520 U.S. 681, 708 (1997). “[T]the party seeking a stay must make out a clear
`
`case of hardship or inequity in being required to go forward.” Sunbeam Prods. v. Hamilton
`
`
`9 RetailMeNot, Inc. v. Honey Sci. LLC, No. 18-937-CFC-MPT, 2020 U.S. Dist. LEXIS 11210,
`at *16 (D. Del. Jan. 23, 2020) (indication of dilatory motive for tactical advantage weighs
`slightly against stay).
`
`
`
`6
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`

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`Beach Brands, Inc., No. 3:09cv-791, 2010 U.S. Dist. LEXIS 45654, at *6 (E.D. Va. May 10,
`
`2010) (quoting Landis v. N. Am. Co., 299 U.S. 248, 255 (1936)); see also Facet Techs., LLC v.
`
`Lifescan, Inc., No 2:22-cv-01717-MCS (MARx), 2023 U.S. Dist. LEXIS 112860, at *4 (C.D.
`
`Cal. May 1, 2023) (applying the standard in the context of a motion to stay pending IPR). Google
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`did not even attempt to satisfy its burden based on the facts of this case. It merely rests on the
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`fact that stays have been entered in other cases. Its failure to demonstrate any hardship or
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`inequity in moving forward—especially in view of its own, one-sided tactical approach—is fatal,
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`even before reaching the three factors typically used in the IPR context. Indeed, those three
`
`factors do not address hardship or inequity that might affect the movant (Google).
`
`II.
`
`LEGAL STANDARD
`A decision to stay litigation is committed to the Court’s sound discretion. Viskase Corp.
`
`v. Am. Nat. Can Co., 261 F.3d 1316, 1328 (Fed. Cir. 2001). If such a stay were “routinely
`
`available to delay the judicial resolution of disputes, the procedure [would be] subject to
`
`inequity, if not manipulation and abuse, through the delays that are inherent in PTO activity.”
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1305 (Fed. Cir. 2009). In determining
`
`“whether to grant what will likely be a multi-year stay, a district court should not lose sight of its
`
`‘paramount obligation to exercise jurisdiction timely in cases properly before it.’” Osmose, Inc.
`
`v. Arch Chems., Inc., No 2:10-cv-108, 2011 U.S. Dist. LEXIS 92710, at *3 (E.D. Va. Jan. 28,
`
`2011) (citing Cherokee Nation of Oklahoma v. U.S., 124 F.3d 1413, 1416 (Fed. Cir. 1997)).
`
`To grant a stay, courts will consider “(1) whether discovery is complete and whether a
`
`trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case;
`
`and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the
`
`nonmoving party.” Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 2:15-cv-21, 2017 U.S. Dist.
`
`LEXIS 225428, at *7 (E.D. Va. Mar. 20, 2017). These factors, however, are not exclusive, and
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`the Court must decide based on the totality of the circumstances, including whether the party
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`seeking a stay suffers any “hardship or inequity.” Aventis Pharma Deutschland GMBH v. Lupin
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`Ltd., 403 F. Supp. 2d 484, 489 (E.D. Va. 2005); see also Facet Techs., LLC, 2023 U.S. Dist.
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`LEXIS 112860, at *4. And “[t]he proponent of a stay bears the burden of establishing its need.”
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`Clinton, 520 U.S. at 708. The Federal Circuit has made clear that, “a district court is not
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`obligated to ‘freeze’ its proceedings between the date that the motion to stay is filed and the date
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`that the PTAB decides on the . . . petition.” VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d
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`1307, 1316 (Fed. Cir. 2014). When the facts—rather than Google’s speculative presumptions of
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`what could happen in the future—are applied to the factors set forth above, the balance of
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`considerations weigh against a stay.
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`III.
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`FACTS
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`On May 1, 2024, SoundClear filed its suit against Google in this Court.
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`There are three patents at issue in this case (the “Asserted Patents”):
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` U.S. Patent 9,804,819
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` U.S. Patent 9,070,374
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` U.S. Patent 9,031,259
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`On June 17, 2024, Google requested a six-week extension to file its initial responsive
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`pleading, which the Court granted on June 18, 2024. Dkts. 11 and 12.
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`On August 5, 2024, Google filed its first of two dispositive motions. Google first filed a
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`motion to dismiss under Rule 12(b)(6). Dkt. 13.
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`On November 4, 2024, Google filed a motion to transfer this case under 28 U.S.C.
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`§ 1404(a). While Google’s motion to transfer has been pending, SoundClear repeatedly
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`requested to make Google’s declarants offered in support of its 1404 motion available for
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`deposition to test critical, narrow, and specific foundational aspects of the declarants testimony.
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`Google repeatedly refused. After SoundClear addressed Google’s discovery authority, Google
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`summarily disagreed. Thus, Google’s action, or strategic inaction, in this case goes directly
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`against its own cited caselaw. Delay in this case is attributable to Google.
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`On February 10, 2025, Google filed two petitions for IPR, one regarding the ’259 patent
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`and another regarding the ’374 patent.
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`This case is still proceeding forward on the claims related to the ’819 patent.
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`IV. ARGUMENT
`Google’s Motion is Legally Deficient
`A.
`Google has not requested an IPR of the ’819 patent. That alone undermines any request
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`for a stay based on IPRs addressing other, unrelated asserted patents. Further, Google did not
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`even attempt to satisfy its burden to prove to this Court that a stay is warranted. In
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`addition to the factors addressed below, courts in this District require that “the party seeking a
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`stay must make out a clear case of hardship or inequity in being required to go forward.”
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`Sunbeam, 2010 U.S. Dist. LEXIS 45654, at *6 (quoting Landis, 299 U.S. at 255); see also Facet
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`Techs., LLC, 2023 U.S. Dist. LEXIS 112860, at *4. “The proponent of a stay bears the burden of
`
`establishing its need.” Clinton, 520 U.S. at 708. Google has not done so here. And it cannot, for
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`the reasons articulated below. Further, “[i]f hardship or inequity cannot be shown, a stay is not
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`merited.” Sunbeam, 2010 U.S. Dist. LEXIS 45654, at *6 (citing Aventis Pharma, 403 F. Supp.
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`2d at 489). Google failed to address its own hardship or inequity in its motion. See generally,
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`Dkt. 74.
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`
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`Any attempt to backfill on reply would be improper. DNT, LLC v. Sprint Spectrum, LP,
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`750 F. Supp. 2d 616, 630 (E.D. Va. 2010) (“Defendants did put forth new evidence and
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`argument not offered in their opening brief which it will therefore not consider.”).
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`B.
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`The Balance of Factors Weigh Against a Stay in This Matter
`This Action Has Progressed, but Only in Google’s Favor
`1.
`Google asserts that “this case is in its infancy.” Dkt. 74 at 10. That is not true. Google
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`carefully staged its early motions to address substantive issues important to Google and forestall
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`and advancement of the case by SoundClear. If Google’s gambit is allowed, every court will face
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`the same three, sequentially staged motions.
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`Google brought a dispositive motion addressing one affirmative defense and another
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`substantive defense of non-infringement. Google filed that motion after receiving a six-week
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`extension to do so. Google then brought a transfer motion, which implicates a substantial amount
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`of discovery.10 SoundClear filed a motion for discovery based upon Google’s reliance on
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`speculative, opinion testimony (Dkts. 69-70) in support of its transfer motion; SoundClear’s
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`discovery motion has been referred to Magistrate Judge Douglas E. Miller. Feb. 13, 2025 Text
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`Order. Google also raised a number of evidentiary matters in this case, including identifying a
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`prior art product it will assert in this case. Dkt. 39 at 19. And Google already investigated and
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`“identified two categories of potential third-party witnesses.” Dkt. 39 at 18.
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`Google’s position as to infancy has also been rejected:
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`[A]lthough these cases are still at an early stage, which can weigh in favor of
`granting a stay, CDX Diagnostics, 2014 U.S. Dist. LEXIS 84992, 2014 WL
`2854656, at *4, courts generally decline to stay early-stage cases where the other
`two factors weigh in the opposite direction — where, as here, a stay would offer
`“limited potential to narrow the issues in the case and the non-moving party will
`[likely] suffer undue prejudice by the delay . . . .”
`
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`10 See Dkt. 72, p. 2 (under Google’s sword-and-shield approach to the Section 1404 convenience
`factors, “every defendant that operates on a nationwide scale will be entitled to a transfer.”).
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`Grecia v. Mastercard, Inc., No. 16-cv-9691 (RJS), 2017 U.S. Dist. LEXIS 233042, at *11
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`(S.D.N.Y. Apr. 3, 2017) (citing Touch Tunes Music Corp. v. Rowe Int’l Corp., 676 F. Supp. 2d
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`169, 176 (S.D.N.Y. 2009)).
`
`
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`In short, this action is not in its early stages, as a matter of law and fact—and certainly, at
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`least, not due to SoundClear’s actions. SoundClear filed its case on May 1, 2024. The parties
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`engaged in filing extensive dispositive motions and briefing. Google triggered the need for early
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`discovery, as mentioned above. And SoundClear repeatedly attempted to move this case forward.
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`
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`In any event, this case has already advanced well ahead of IPRs, which (as of this
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`Opposition) have not even been formally accorded a filing date by the USPTO.
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`
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`Google cites caselaw that contradicts its actions in this litigation. Opening Br. at 7 (citing
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`Keysight, 2023 U