Case 2:24-cv-00321-AWA-DEM Document 80 Filed 03/10/25 Page 1 of 21 PageID#
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
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`Plaintiff,
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`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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`DEFENDANT GOOGLE LLC’S REPLY IN SUPPORT OF ITS
`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.
`III.
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`IV.
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARD ........................................................................................................ 2
`ARGUMENT ..................................................................................................................... 2
`A.
`The burden of litigation on the parties and the court favor a stay. ........................ 2
`B.
`The stage of the litigation factor strongly favors a stay. ........................................ 4
`C.
`A stay would not unduly prejudice SoundClear. ................................................... 7
`D.
`The simplification factor favors a stay. ................................................................ 10
`E.
`The “hardship or inequity” factor favors a stay. .................................................. 14
`CONCLUSION ................................................................................................................ 15
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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. Hewlett-Packard Company,
`No. 2:15-cv-73, 2015 U.S. Dist. LEXIS 126014 (E.D. Va. Sep. 15, 2015) .................... passim
`
`Aventis Pharma Deutschland GMBH v. Lupin Ltd.,
`403 F. Supp. 2d 484 (E.D. Va. 2005) ......................................................................................14
`
`Centripetal Networks, Inc. v. Cisco Systems, Inc.,
`No. 2:18-cv-94, 2019 U.S. Dist. LEXIS 231216 (E.D. Va. Feb. 25, 2019) ..................6, 12, 14
`
`Centripetal Networks, Inc. v. Palo Alto Networks, Inc.,
`No. 2:21-cv-137 (RCY), 2022 U.S. Dist. LEXIS 36457 (E.D. Va. Mar. 1,
`2022) ..................................................................................................................................11, 12
`
`Cobalt Boats v. Sea Ray Boats,
`No. 2:15-cv-21, 2015 U.S. Dist. LEXIS 154693 (E.D. Va. Nov. 16, 2015) .............................8
`
`Gibbs v. Plain Green LLC,
`331 F. Supp. 3d 518 (E.D. Va. 2018) ........................................................................................8
`
`Grecia v. Mastercard, Inc.,
`No. 16-cv-9691 (RJS), 2017 U.S. Dist. LEXIS 233042 (S.D.N.Y. Apr. 3,
`2017) ......................................................................................................................................5, 6
`
`Health Diagnostic Laboratory, Inc. v. Boston Heart Diagnostics Corp.,
`No. 3:14-cv-796-HEH, 2015 U.S. Dist. LEXIS 199061 (E.D. Va. Feb. 4,
`2015) ....................................................................................................................................4, 12
`
`Indivior Inc. v. Dr. Reddy’s Labs., S.A.,
`930 F.3d 1325 (Fed. Cir. 2019)................................................................................................11
`
`Longhorn HD LLC v. NetScout Systems, Inc.,
`No. 2:20-cv-349-JRG, 2022 U.S. Dist. LEXIS 2852 (E.D. Tex. Jan. 6, 2022) .........................9
`
`Maxell Ltd. v. Apple Inc.,
`No. 5:19-cv-36-RWS, 2020 U.S. Dist. LEXIS 257531 (E.D. Tex. Apr. 27,
`2020) ..........................................................................................................................................9
`
`Nike, Inc. v. Lululemon USA Inc.,
`No. 22-cv-00082 (RA) (OTW), 2023 U.S. Dist. LEXIS 31258 (S.D.N.Y. Feb.
`24, 2023) ....................................................................................................................................5
`
`PPG Industries, Inc. v. Guardian Industries Corp.,
`75 F.3d 1558 (Fed. Cir. 1996)....................................................................................................3
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`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) ....................2, 3, 12
`
`Segin Systems, Inc. v. Stewart Title Guaranty Co.,
`30 F. Supp. 3d 476 (E.D. Va. 2014) ................................................................................5, 8, 10
`
`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) .....................12, 13
`
`Sunbeam Prods. v. Hamilton Beach Brands, Inc.,
`No. 3:09-cv-791, 2010 U.S. Dist. LEXIS 45654 (E.D. Va. May 7, 2010) ..............................14
`
`Tessera Advanced Technologies, Inc. v. Samsung Electronics Co.,
`No. 2:17-cv-671-JRG, 2018 U.S. Dist. LEXIS 120999, (E.D. Tex. July 19,
`2018) ..........................................................................................................................................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) ................................................................................................................................4, 7, 12
`
`Virginia Innovation Sciences, Inc. v. Samsung Electronics Co.,
`No. 2:14-cv-217, 2014 U.S. Dist. LEXIS 207248 (E.D. Va. Nov. 18, 2014) .......................4, 7
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)........................................................................................4, 5, 10
`
`Williford v. Armstrong World Industries, Inc.,
`715 F.2d 124 (4th Cir. 1983) .....................................................................................................3
`
`Statutes
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`35 U.S.C. § 315(e)(2) .....................................................................................................................11
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`America Invents Act § 18(b)............................................................................................................7
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`I.
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`INTRODUCTION
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`This motion is about applying settled law to clear facts. The Court need not parse through
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`Plaintiff’s charged accusations and speculative conjectures. Applying controlling precedent to
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`undisputed facts is all that is needed. That simple equation leads to a single conclusion: the case
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`should be stayed.
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`All the applicable factors favor staying the case pending inter partes review (IPR):
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`●
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`The Burden of Litigation. Under this District’s precedent, a stay is warranted
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`when it would reduce the burden of litigation on the court, such as by avoiding multiple trials.
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`Staying would reduce that burden here. Not staying the case would risk piecemeal litigation and
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`multiple trials wasting the Court’s limited resources. Thus, the burden of litigation favors a stay.
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`●
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`The Stage of the Litigation. Courts in this District have repeatedly held this factor
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`strongly favors a stay when fact discovery and claim construction have not started, and no trial
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`date has been set. Here, fact discovery and claim construction have not started, and no trial date or
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`pretrial schedule have been set. That motions to dismiss and transfer are pending makes no
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`difference–this case is still at its infancy. Thus, this factor strongly favors a stay.
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`●
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`Undue Prejudice. Under this District’s precedent, plaintiffs that do not directly
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`compete with defendants cannot show undue prejudice under this factor because money damages
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`are available as a remedy and can always be determined regardless of a stay. Here, Plaintiff admits
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`it does not directly compete with Google and fails to even address the applicable precedent. Thus,
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`this factor favors a stay.
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`●
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`Simplification of the Issues. Courts in this District have explained that this factor
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`favors a stay where patent claims might be cancelled, where statements in IPR can later aid in
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`interpreting claim terms, and where statutory estoppel provisions may narrow the case. All three
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`are true here: it is undisputed that claims of the ’259 and ’374 patent might be cancelled. If those
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`patents survive, statements made during IPR can nonetheless aid this Court in interpreting terms.
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`And statutory estoppel provisions may narrow the case. Although Google has only filed IPRs for
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`2 of 3 patents, cases from this District and the Federal Circuit make clear that this factor favors a
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`stay even when not all patents are challenged. Plaintiff fails to meaningfully distinguish any of
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`these cases. Thus, the simplification factor favors a stay.
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`II. LEGAL STANDARD
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`The parties agree that deciding whether to stay the case pending IPR requires considering:
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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.
`
`Sec. First Innovations, LLC v. Google LLC, No. 2:23-cv-97, 2024 U.S. Dist. LEXIS 11251, at *4
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`(E.D. Va. Jan. 19, 2024) (“SFI I”). Compare Mot. 4 with Opp. 7. The parties also agree that these
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`three factors are not exclusive, and that 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”). Compare Mot. 5 with Opp. 8. Plaintiff
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`does not dispute that as part of the totality of the circumstances, “courts in this district have
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`assessed whether the stay ‘will reduce the burden of litigation on the parties and on the court.’”
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`SFI II, 2024 U.S. Dist. LEXIS 223484, at *10 (citations omitted). Compare Mot. 15 with Opp. 20-
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`21.
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`III. ARGUMENT
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`A. The burden of litigation on the parties and the court favor a stay.
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`Google’s opening brief made a simple point: “a stay would clearly reduce the burden of
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`litigation by avoiding duplicative efforts, including potentially multiple trials.” Mot. 15. In
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`particular, Google discussed SFI II, in which the court declined to litigate one patent separate from
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`the others because that was not “an efficient use of the Court’s resources.” 2024 U.S. Dist. LEXIS
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`223484, at *15. The court’s decision was “grounded in a strong aversion to expending judicial
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`resources to conduct two trials.” Id.
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`Plaintiff’s opposition fails to meaningfully address SFI II or Google’s argument. Instead,
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`Plaintiff cites two cases to argue that “[b]urdens are inevitable for all parties in litigation.” Opp. 20
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`(citations omitted).
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`First, Plaintiff’s cases are inapt. Williford v. Armstrong World Industries, Inc., 715 F.2d
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`124, 128 (4th Cir. 1983) involved an interlocutory appeal on a stay for co-debtors in a bankruptcy
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`case where “[m]uch of the discovery was completed before protective orders of the bankruptcy
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`court were filed.” PPG Industries, Inc. v. Guardian Industries Corp., 75 F.3d 1558, 1567 (Fed.
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`Cir. 1996) involved appeal of an order granting preliminary injunction relief. Neither case involved
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`a motion to stay a patent case pending IPR–much less whether a stay would reduce the burden of
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`litigation. Both cases are irrelevant.
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`Second, and more importantly, whether litigations are generally burdensome is not the right
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`question. Rather, the right question is: would a stay here decrease that burden on the parties and
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`on the Court? Plaintiff never addresses Google’s main point that staying this case would decrease
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`the burden because the Court would avoid conducting two trials. And Plaintiff effectively concedes
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`that staying would decrease the burden on the Court. Opp. 21. The Court’s time and resources are
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`limited and valuable—a fact that Plaintiff simply ignores. Finally, Plaintiff speculates on what
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`issues might remain after IPR and how the case might develop. Opp. 21. But lack of clarity favors
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`staying the case to avoid needless litigation over ultimately moot issues, especially where other
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`factors favor a stay as well.
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`Plaintiff fails to persuasively rebut Google’s argument that a stay will reduce the burden of
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`litigation on the parties and on the court. The totality of the circumstances favors a stay.
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`B. The stage of the litigation factor strongly favors a stay.
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`This case is also in its early stages. Precedent from this District and the Federal Circuit
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`have established that an early stage of litigation “heavily favors” a stay. In VirtualAgility Inc. v.
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`Salesforce.com, Inc., 759 F.3d 1307, 1317 (Fed. Cir. 2014), the Federal Circuit explained that this
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`factor “heavily favor[ed]” a stay where discovery had not yet begun and no trial date had been set.1
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`Even considering the later institution date, there remained 8 months of fact discovery. Id. The
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`Federal Circuit explained that “at either time” the case was “still at its infancy.” Id. In Virginia
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`Innovation Sciences, Inc. v. Samsung Electronics Co., No. 2:14-cv-217, 2014 U.S. Dist. LEXIS
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`207248, at *5-6 (E.D. Va. Nov. 18, 2014) (“VIS”), discovery had actually started but was “far from
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`‘complete’” and “no trial date ha[d] been set.” The court held that this factor “‘heavily favor[ed]’
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`a stay.” Id. (citations omitted). In Audio MPEG, Inc. v. Hewlett-Packard Company, No. 2:15-cv-
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`73, 2015 U.S. Dist. LEXIS 126014, at *11 (E.D. Va. Sep. 15, 2015), fact discovery had not begun,
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`and no trial date or Markman hearing had been set. The court explained the case was “in its
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`infancy” which “strongly” favored a stay. Id. In Health Diagnostic Laboratory, Inc. v. Boston
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`Heart Diagnostics Corp., No. 3:14-cv-796-HEH, 2015 U.S. Dist. LEXIS 199061, at *5 (E.D. Va.
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`Feb. 4, 2015), “no discovery ha[d] taken place” and neither a trial date nor Markman hearing had
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`been set. The court explained the case was “in the earliest stages” and the factor was “particularly
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`compelling.” Id.
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`1 Plaintiff does not dispute 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.”
`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). Compare Mot. 6 n.4 with Opp. 8.
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`Based on these cases, Google argued that the present case was similarly “at its infancy”
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`given that “[f]act discovery has not opened,” the claim construction process has not begun, and no
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`trial date has been set. Mot. 7. “Thus, just like those cases, the stage of the litigation factor here
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`strongly favors a stay.” Id.
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`Plaintiff hotly contests that the case is “in its infancy” but completely fails to address
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`Google’s cases or straightforward arguments.
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`Instead, Plaintiff fixates on the early motions practice in this case. Opp. 10. For example,
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`Plaintiff points to its own motion to open venue discovery, which was just denied by the Court last
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`week. Dkt. 78. But this just highlights that fact discovery has not opened here–a critical fact based
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`on applicable precedent.
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`Nor are any of Plaintiff’s cited cases persuasive. For example, Plaintiff argues Segin
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`Systems, Inc. v. Stewart Title Guaranty Co., 30 F. Supp. 3d 476, 482 (E.D. Va. 2014). Opp. 12.
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`But Segin actually cuts against Plaintiff. Unlike here, fact discovery had begun in Segin, including
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`interrogatories and document productions. More time had elapsed in Segin than here, and a
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`Markman hearing and trial date had both been set in Segin. And missing from Segin is any
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`discussion of early motions practice affecting the stage of litigation factor.
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`Plaintiff argues an out-of-circuit case Grecia v. Mastercard, Inc., No. 16-cv-9691 (RJS),
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`2017 U.S. Dist. LEXIS 233042, at *11 (S.D.N.Y. Apr. 3, 2017).2 But Grecia had nothing to do
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`2 Plaintiff’s Grecia case is also questionable on the law. The Grecia court ruled against defendants
`in part because it doubted the second round of IPRs would be any more successful than the first.
`2017 U.S. Dist. LEXIS 233042, at *7 (“The doubt is further compounded here, where the PTO in
`fact declined to institute IPR for the previous set of petitions challenging Grecia’s patents.”). But
`this reasoning runs directly contrary to the Federal Circuit and this District’s precedent. See, e.g.,
`SFI I, 2024 U.S. Dist. LEXIS 11251, at *9 (“[A]s the Federal Circuit noted in VirtualAgility, a
`district court should not consider whether the PTAB will ultimately grant review when deciding a
`motion to stay.”) (quoting Audio MPEG, 2015 U.S. Dist. LEXIS 126014, at *10); see also Nike,
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`with early motions practice on the stage of litigation factor. Rather, Grecia involved an unusual
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`set of circumstances where one set of defendants filed IPRs and the court granted a stay pending
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`IPR, the PTAB denied institution of all IPRs, and then a second set of newly added defendants
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`filed another set of IPRs and moved for a second stay. Id., at *5. But this case has nothing to do
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`with multiple sets of defendants or multiple rounds of IPRs.
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`None of Plaintiff’s cases support its argument that early motions practice somehow affects
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`the stage of litigation factor. Indeed, the only relevant precedent runs to the contrary. In Centripetal
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`Networks, Inc. v. Cisco Systems, Inc., No. 2:18-cv-94, 2019 U.S. Dist. LEXIS 231216, at *2-3
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`(E.D. Va. Feb. 25, 2019) (“Cisco”), the parties had engaged in early dispositive motions briefing
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`before the defendant filed IPRs and moved to stay. The court recognized: “Although Plaintiff filed
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`its action one year ago, there is a pending Motion to Dismiss. Therefore, the Court has not yet
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`entered a scheduling order for discovery, a Markman hearing has not been set, and the case has
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`not been set for trial.” Id., at *6-7 (emphasis added). The court found that the stage of litigation
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`factor favored a stay and stayed the case. Id., at *7. Google raised the pending motion to dismiss
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`in Cisco, but Plaintiff fails to address it. Compare Mot. 7 with Opp. 10-14.
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`Plaintiff cannot overcome the fact that this case is at its infancy. Under applicable
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`precedent, when a case is at its infancy, the stage of litigation factor strongly favors a stay.
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`Plaintiff’s arguments to the contrary are unsupported and unpersuasive. The stage of litigation
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`factor strongly favors a stay.
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`Inc. v. Lululemon USA Inc., No. 22-cv-00082 (RA) (OTW), 2023 U.S. Dist. LEXIS 31258, at *5-
`6 (S.D.N.Y. Feb. 24, 2023) (questioning the viability of Grecia).
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`C. A stay would not unduly prejudice SoundClear.
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`Plaintiff will not suffer undue prejudice from a stay. Delay by itself does not amount to
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`undue prejudice, and that delays based on statutory frameworks, such as those pursuant to IPR
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`proceedings under America Invents Act § 18(b), normally do not amount to undue prejudice.
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`Mot. 12. Plaintiff does not dispute either point of law. Compare Mot. 12 with Opp. 16-20.
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`Non-practicing entities (NPEs) like Plaintiff generally cannot show undue prejudice
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`because of the availability of money damages as a remedy. In VIS, the court held that “[a]s a
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`general rule,” NPEs “cannot show the type of prejudice that would weigh in favor of denying a
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`stay” because money damages are available as a remedy and “can be determined regardless of any
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`delay attributable to a stay.” 2014 U.S. Dist. LEXIS 207248, at *7. In In re TLI Communications
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`LLC, Patent Litigation, MDL No. 1:14md2534, 2014 U.S. Dist. LEXIS 182206, at *8 (E.D. Va.
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`Aug. 11, 2014), the plaintiff was an NPE, and thus had “no reasonable basis for requesting or
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`recovering anything other than monetary damages in this case, which, of course, can be determined
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`regardless of any delay attributable to a stay.” In SFI I, the court reached the same conclusion with
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`the same reasoning because the plaintiff there was an NPE that did “not directly compete with
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`Google.” 2024 U.S. Dist. LEXIS 11251, at *10.
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`Google’s opening brief discussed each of these cases. Mot. 12-13. In response, Plaintiff
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`specifically admits that it is an NPE that does not directly compete with Google. Opp. 17 n.12. But
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`Plaintiff then fails to even address Google’s cases. Compare Mot. 12-13 with Opp. 16-20. Nor
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`does Plaintiff dispute that money damages are a sufficient remedy as evidenced by its undisputed
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`failure to seek injunctive relief. Mot. 13-14. Thus, the same conclusion is warranted: NPEs like
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`Plaintiff here cannot show undue prejudice because of the availability of money damages as a
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`remedy.
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`Without addressing any of Google’s cases, Plaintiff hotly disputes this conclusion.
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`Opp. 17. But none of Plaintiff’s cases cited in opposition are persuasive.
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`Plaintiff relies on Gibbs v. Plain Green LLC, 331 F. Supp. 3d 518, 527-28 (E.D. Va. 2018).
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`But Gibbs is clearly distinguishable. Gibbs was a class action lawsuit for predatory lending where
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`the central issue was whether the defendants had sovereign immunity under Indian law. Id. at 523-
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`24. One of the defendants moved to stay pending a decision by the Judicial Panel on Multidistrict
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`Litigation on whether to consolidate and transfer a number of cases. Id. at 525. Gibbs did not
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`involve patents, motions to stay pending IPR, the undue prejudice factor for a motion to stay
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`pending IPR, or whether NPEs can show undue prejudice under that factor. And the present case
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`is not a class action, does not involve predatory lending, sovereign immunity under Indian law, or
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`multidistrict litigation jurisdiction.
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`Plaintiff’s reliance on Cobalt Boats v. Sea Ray Boats is similarly misplaced. Opp. 17-18.
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`Plaintiff overlooks the fact that the Cobalt Boats court later found that a stay will not unduly
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`prejudice the plaintiffs. No. 2:15-cv-21, 2015 U.S. Dist. LEXIS 154693, at *10 (E.D. Va. Nov. 16,
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`2015). And the court gave two reasons equally applicable here: “a stay will not diminish the
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`monetary damages available to Plaintiff in this matter and IPR will proceed on a statutory
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`schedule.” Id. Thus, Cobalt Boats actually favors a stay here.
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`Plaintiff relies on Segin, Opp. 20, but overlooks that the court’s prejudice analysis was
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`predicated on the fact that the parties were direct competitors. Segin, 30 F. Supp. 3d at 483-84
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`(“Plaintiffs have sufficiently shown, for the purposes of this motion, that they and Defendants are
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`direct competitors.”). Here, the exact opposite is true: Plaintiff admits that the parties are not direct
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`competitors. Opp. 17 n.12.
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`Plaintiff fares no better with its out-of-circuit cases. The court’s reasoning in Longhorn HD
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`LLC v. NetScout Systems, Inc. was specifically predicated on the fact that the case involved a
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`different patent office procedure not at issue here. No. 2:20-cv-349-JRG, 2022 U.S. Dist. LEXIS
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`2852, at *6 (E.D. Tex. Jan. 6, 2022) (“Notably, unlike an IPR, there is no timeline for the duration
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`of an EPR.”). The court’s reasoning in Maxell Ltd. v. Apple Inc. was predicated on an “imminent
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`trial date.” No. 5:19-cv-36-RWS, 2020 U.S. Dist. LEXIS 257531, at *6 (E.D. Tex. Apr. 27, 2020).
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`That contrasts sharply with the lack of a trial date here. In Tessera Advanced Technologies, Inc. v.
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`Samsung Electronics Co., the court specifically rejected the plaintiff’s argument on the undue
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`prejudice factor: “Samsung’s alleged dilatory tactics in delaying the filing of its IPRs is both
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`permissible under the statute and better analyzed under Factor 3.” No. 2:17-cv-671-JRG, 2018
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`U.S. Dist. LEXIS 120999, at *4-5 (E.D. Tex. July 19, 2018) (emphasis added).3 None of Plaintiff’s
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`cases support its undue prejudice argument here.
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`Finally, Plaintiff’s prejudice arguments have already been directly rejected by the Federal
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`Circuit and courts in this District.
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`Plaintiff argues undue prejudice from alleged dilatory tactics. Opp. 18. But this exact same
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`argument was rejected in this District: “Google filed its IPR petitions within eight months of the
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`complaint and filed the instant motion to stay just four days after filing its last IPR petition—
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`neither of which suggests dilatory tactics.” SFI I, 2024 U.S. Dist. LEXIS 11251, at *10-11.4
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`3 Nor does Tessera help Plaintiff on the stage of litigation factor. In Tessera, the parties had
`“expended tremendous resources in fact discovery already,” had “produced hundreds of thousands
`of pages of documents,” and were “well into the claim construction process . . . .” Tessera, 2018
`U.S. Dist. LEXIS 120999, at *5. None of those facts are true here.
`4 Plaintiff argues that “Google waited nine months.” Opp. 18 (emphasis original). But Google was
`served with the complaint on June 3, 2024, and the IPRs were filed on February 10, 2025, which
`is eight months and one week. Compare Dkt. 11 with Dkts. 75-1 and 75-2.
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`Plaintiff also argues it “will suffer evidentiary prejudice as relevant witnesses’ memories
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`fade and relevant documents are lost.” Opp. 19. But the Federal Circuit has explained: “It is
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`undoubtedly true, as many courts have observed, that with age and the passage of time, memories
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`may fade and witnesses may become unavailable. Without more, however, these assertions here
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`are not sufficient to justify a conclusion of undue prejudice.” VirtualAgility, 759 F.3d at 1319.
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`Courts in this District have followed VirtualAgility to reach the same conclusion. SFI I, 2024 U.S.
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`Dist. LEXIS 11251, at *11 (“by itself, the passage of time is not sufficient to conclude that the
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`non-moving party will suffer evidentiary prejudice”); Segin, 30 F. Supp. 3d at 484 (rejecting
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`plaintiffs’ argument that “witnesses and evidence will become less reliable as time passes” because
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`plaintiffs “provide no detail and specific examples, and do not explain how this factor would favor
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`Defendants and not Plaintiffs.”).
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`Under applicable law, plaintiffs who do not directly compete with defendants cannot show
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`undue prejudice because of the availability of money damages as a remedy. Here, the undisputed
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`facts are that Plaintiff is a non-practicing entity that does not directly compete with Google.
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`Plaintiff’s arguments to the contrary are directly contrary to settled law. And Plaintiff’s cited cases
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`are inapt or stand for the exact opposite of what they are cited for. The undue prejudice factor
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`favors a stay.
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`D. The simplification factor favors a stay.
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`Staying this case will simplify it. The critical question is “not whether PTAB review would
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`simplify the issues in question, but whether a stay of this action would do so.” Mot. 8 (quoting
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`Audio MPEG, 2015 U.S. Dist. LEXIS 126014, at *7). Here, a “stay here will simplify the issues
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`regardless of the outcome of the IPRs.” Mot. 8. In SFI I, the court explained that “statements made
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`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.” 2024 U.S. Dist.
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`LEXIS 11251, at *8 n.1. If some or all of the claims of the ’259 and ’374 patents are cancelled,
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`there will be further simplification because those claims become moot. Mot. 9 (citing Indivior Inc.
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`v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1349 (Fed. Cir. 2019)). Even if no claims are cancelled,
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`“the case will still be simplified because of the estoppel provisions in 35 U.S.C. § 315(e)(2).”
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`Mot. 9 (citing Audio MPEG, 2015 U.S. Dist. LEXIS 126014, at *9).
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`Google’s opening brief raised these cases. Mot. 8-9. But Plaintiff fails to address Google’s
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`cases. Opp. 12-16. And Plaintiff’s unsupported arguments to the contrary lack merit. Plaintiff’s
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`opposition is notable for what Plaintiff does not dispute–that some or all claims of the ’259 and
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`’375 patents may be cancelled by the PTAB. Opp. 12-16. Such cancellation would significantly
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`simplify the case by rendering parts of the case moot.
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`And Plaintiff does not dispute that the estoppel provisions in 35 U.S.C. § 315(e)(2) would
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`potentially apply here. Compare Mot. 9 with Opp. 12. Instead, Plaintiff argues no simplification
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`because the IPR estoppel statute does not cover “product prior art.” Opp. 12. Plaintiff’s all-or-
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`nothing argument lacks merit. The question is whether a stay of the action would simplify the issues
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`in question–not whether a stay would altogether eliminate all issues. Audio MPEG, 2015 U.S. Dist.
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`LEXIS 126014, at *7.
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`And Plaintiff does not dispute that “statements made in the course of an IPR proceeding
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`concerning the patent in issue may also add to the patent’s prosecution history, which could assist
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`this Court’s claim construction analysis.” SFI I, 2024 U.S. Dist. LEXIS 11251, at *8 n.1.
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`Under applicable precedent, the simplification factor favors a stay even when not all claims
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`are challenged. In Centripetal Networks, Inc. v. Palo Alto Networks, Inc., the court explained
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`“[e]ven if the PTAB were to only review the five [of thirteen] petitions currently instituted, it
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`would still simplify the issues in this action.” No. 2:21-cv-137 (RCY), 2022 U.S. Dist. LEXIS
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`36457, at *14 (E.D. Va. Mar. 1, 2022). In Cisco, the court explained that even though IPRs were
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`not for “all of the claims,” the simplification factor still heavily favored a stay: “granting a stay
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`will likely simplify the issues tried.” 2019 U.S. Dist. LEXIS 231216, at *7. In SFI II, the court
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`explained that: “even if IPR will not impact all the disputed patents, the fact that a portion of the
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`patents are under IPR will simplify the issues and supports a stay of all pending claims before the
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`court.” 2024 U.S. Dist. LEXIS 223484, at *7 (emphasis added).
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`Google’s opening brief cited in support seven Federal Circuit or Eastern District of Virginia
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`cases on this issue. Mot. 9-11. Plaintiff’s opposition fails to meaningfully distinguish any of these
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`cases.
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`Instead, Plaintiff argues staying now is premature and speculative because the PTAB has
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`not yet instituted IPR. Opp. 16. But Plaintiff’s argument is the exact same argument rejected by
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`the court in Sharpe Innovations, Inc. v. T-Mobile USA, Inc., No. 2:17-cv-351, 2018 U.S. Dist.
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`LEXIS 240665, at *9 (E.D. Va. Jan. 10, 2018). In that case, the plaintiff argued that “granting a
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`stay before the PTAB has instituted IPR would be premature” and more specifically that “assessing
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`the potential simplification of issues before IPR is instituted is too speculative.” Id., at *9. The
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`court rejected this argument, explaining that “this district does not disfavor stays before IPR is
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`instituted, and this Court has granted a stay in many such instances.” Id. (citing Audio MPEG,
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`2015 U.S. Dist. LEXIS 126014; TLI, 2014 U.S. Dist. LEXIS 182206; Health Diagnostic, 2015
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`U.S. Dist. LEXIS 199061). The Sharpe court went on to explain that:
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`If the Court waits until IPR is instituted to stay the action, the parties will have engaged in
`many litigation efforts that would be duplicative of their efforts before the PTAB during
`IPR proceedings. This is