Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 1 of 8 PageID# 1981
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
`
`
`
`SOUNDCLEAR TECHNOLOGIES LLC,
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`v.
`
`
`GOOGLE LLC,
`
`
`Civil No. 2:24cv321
`
`Defendant.
`
`ORDER
`Before the Court is a Motion to Stay Pending Inter Partes Review (the “Motion”
`
`or the “Motion to Stay”) filed by Defendant GOOGLE LLC (“Google”). Mot. Stay, ECF
`
`No. 73. The Court has determined that a hearing on the Motion is not necessary, as
`
`the matters for decision are adequately presented in the briefs. See E.D. Va. Local
`
`Civ. R. 7(J). For the reasons below, the Motion (ECF No. 73) is GRANTED.
`
`I.
`
`
`
`BACKGROUND
`
`On May 1, 2024, Plaintiff SOUNDCLEAR TECHNOLOGIES LLC
`
`(“SoundClear”) filed a three-count Complaint alleging that Google is infringing on
`
`three patents that SoundClear holds—patent numbers 9,031,259 (the “’259 patent”);
`
`9,070,374 (the “’374 patent”); and 9,804,819 (the “’819 patent”). Compl., ECF No. 1
`
`(“Compl.”). The patents involve audio technologies and were originally obtained by
`
`research and development engineers at the “audio processing product powerhouse”
`
`JVC Kenwood, before being acquired by SoundClear. Id. ¶¶ 38, 44.
`
`1
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
`
`
`
`SOUNDCLEAR TECHNOLOGIES LLC,
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`v.
`
`
`GOOGLE LLC,
`
`
`Civil No. 2:24cv321
`
`Defendant.
`
`ORDER
`Before the Court is a Motion to Stay Pending Inter Partes Review (the “Motion”
`
`or the “Motion to Stay”) filed by Defendant GOOGLE LLC (“Google”). Mot. Stay, ECF
`
`No. 73. The Court has determined that a hearing on the Motion is not necessary, as
`
`the matters for decision are adequately presented in the briefs. See E.D. Va. Local
`
`Civ. R. 7(J). For the reasons below, the Motion (ECF No. 73) is GRANTED.
`
`I.
`
`
`
`BACKGROUND
`
`On May 1, 2024, Plaintiff SOUNDCLEAR TECHNOLOGIES LLC
`
`(“SoundClear”) filed a three-count Complaint alleging that Google is infringing on
`
`three patents that SoundClear holds—patent numbers 9,031,259 (the “’259 patent”);
`
`9,070,374 (the “’374 patent”); and 9,804,819 (the “’819 patent”). Compl., ECF No. 1
`
`(“Compl.”). The patents involve audio technologies and were originally obtained by
`
`research and development engineers at the “audio processing product powerhouse”
`
`JVC Kenwood, before being acquired by SoundClear. Id. ¶¶ 38, 44.
`
`1
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 2 of 8 PageID# 1982
`
`
`
`After being served and obtaining an extension of time to respond, see Order,
`
`ECF No. 12, Google filed a Motion to Dismiss for Failure to State a Claim Under Rule
`
`12(b)(6) (the “Motion to Dismiss”) on August 5, 2024, seeking dismissal of the claims
`
`related to the ’374 and ’819 patents, as well as all claims for willful infringement. See
`
`Mot. Dismiss, ECF No. 13. The Motion to Dismiss is ripe and remains pending.
`
`
`
`On November 4, 2024, Google then filed a Motion to Transfer to the Northern
`
`District of California Under 28 U.S.C. § 1404(a) (the “Motion to Transfer”). Mot.
`
`Transfer, ECF No. 38. That motion is ripe and remains pending.
`
`
`
`On January 23, 2025, SoundClear filed a Motion to Conduct Venue Discovery,
`
`seeking an order granting it leave to conduct “limited venue-based discovery” related
`
`to the pending Motion to Transfer. Mot. Venue Discovery, ECF No. 69. The Motion to
`
`Conduct Venue Discovery was denied by Magistrate Judge Douglas E. Miller on
`
`March 5, 2025. Order, ECF No. 78. On March 14, 2025, SoundClear filed Objections
`
`to Judge Miller’s Order. Obj., ECF No. 82. The Objections are not yet ripe and remain
`
`pending.
`
`The Court additionally notes that a Rule 16(b) conference and scheduling order
`
`have not yet occurred in this case. Moreover, discovery has not begun, claim construc-
`
`tion has not occurred, and no trial date has been set.
`
`
`
`On February 18, 2025, Google filed the instant Motion to Stay along with its
`
`Memorandum in Support. Mot. Stay, ECF No. 73; Mem. Supp. Mot. Stay, ECF No.
`
`74 (“Mem. Supp.”). The Motion requests that the Court stay this case pending inter
`
`partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”). Mem. Supp.
`
`2
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 3 of 8 PageID# 1983
`
`at 1. Google initiated IPR proceedings before the PTAB on February 10, 2025. Decl.
`
`of Joshua Yin, ECF No. 75.
`
`SoundClear has responded to the Motion to Stay. Resp. Br. Opp’n Mot. Stay,
`
`ECF No. 77 (“Resp. Opp’n”). Google has replied. Reply Supp. Mot. Stay, ECF No. 80
`
`(“Reply”). The Motion is ripe for adjudication.
`
`II.
`
`LEGAL STANDARD
`
`
`
`
`
`A.
`
`Inter Partes Review
`
`Parties who are not owners of a patent may challenge the validity of a patent
`
`before the PTAB through inter partes review. 35 U.S.C. § 311. The party institutes
`
`an IPR proceeding by filing a petition with the PTAB, requesting that one or more of
`
`the patent’s claims be canceled as unpatentable under 35 U.S.C. § 102 (novelty) or 35
`
`U.S.C. § 103 (obviousness). 35 U.S.C. § 311(b). The PTAB will authorize IPR of the
`
`patent claims if “there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314.
`
`If IPR is instituted, the PTAB must execute a final written decision within a year,
`
`but that deadline can be extended by six months for “good cause.” 35 U.S.C. §
`
`316(a)(11). Here, Google has requested that the PTAB cancel all twenty (20) claims
`
`of the ’259 patent and all fifteen (15) claims of the ’374 patent. Mem. Supp. at 3.
`
`
`
`
`
`B. Discretionary Stays Pending IPR
`
`“[T]he power to stay proceedings is incidental to the power inherent in every
`
`court to control disposition of the causes on its docket with economy of time and effort
`
`for itself, for counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254
`
`3
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 4 of 8 PageID# 1984
`
`(1936). “When a party other than the patent owner or a real party in interest files an
`
`IPR petition, the decision to stay district court proceedings ‘is left to the district
`
`court’s discretion.’” Sec. First Innovations, LLC v. Google LLC, No. 2:23cv97, 2024
`
`WL 234720, at *1 (E.D. Va. Jan. 22, 2024) (quoting Sharpe Innovations, Inc. v. T-
`
`Mobile USA, Inc., No. 2:17cv351, 2018 WL 11198604, at *2 (E.D. Va. Jan. 10, 2018)).
`
`District courts consider the following three factors in deciding whether to issue a stay
`
`pending IPR proceedings:
`
`(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.
`
`Id. (citing Centripetal Networks, LLC v. Keysight Tech., Inc., No. 2:22cv2, 2023 WL
`
`5127163, at *3 (E.D. Va. Mar. 20, 2023) (collecting cases)).
`
`III. ANALYSIS
`
`
`
`The Court considers the three stay factors in turn. For the reasons stated be-
`
`low, the Court finds that each factor supports a stay.
`
`
`
`
`
`A.
`
`Stage of the Litigation
`
`Although it has been pending ten months since service of the Complaint, this
`
`litigation is still in the early stages. Due to the pending motion to dismiss, Google has
`
`not yet answered. Moreover, no Rule 16(b) scheduling order has been entered, discov-
`
`ery has not begun, and no trial date has been set. “The stage of the litigation weighs
`
`in favor of a stay when the motion is filed early in the proceedings—before a trial date
`
`or Markman hearing is set—and discovery has not been substantially completed.”
`
`4
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 5 of 8 PageID# 1985
`
`Centripetal Networks, LLC, 2023 WL 5127163, at *4 (citing Audio MPEG, Inc. v.
`
`Hewlett-Packard Co., No. 2:15cv73, 2015 WL 5567085, at *4 (E.D. Va. Sept 21, 2015)).
`
`As in Centripetal Networks, LLC, here “no scheduling order has been entered and the
`
`parties have yet to begin discovery.” Id.; cf., e.g., Sec. First Innovations, LLC, 2024
`
`WL 234720, at *2 (finding factor neutral where scheduling order had been entered,
`
`trial date had been set, and Markman hearing was scheduled). Thus, the Court finds
`
`that the “stage of litigation factor favors issuing a stay.” Centripetal Networks, LLC,
`
`2023 WL 5127163, at *4.
`
`
`
`
`
`B. Whether a Stay Would Simplify the Issues
`
`The second factor is whether a stay would simplify the issues in the case, and
`
`it also weighs in favor of granting a stay here. “A stay pending the resolution of ad-
`
`ministrative proceedings will simplify matters before the district court if the admin-
`
`istrative proceedings have the potential to dispose of claims entirely.” Id. at *4. Here,
`
`the IPR proceedings have the potential to dispose of all of the claims as to two of the
`
`patents, possibly eliminating two of the three counts in the Complaint. In addition,
`
`even where the administrative proceeding will not dispose of all claims, “a stay may
`
`simplify matters if it allows the administrative proceedings time to build a record
`
`that assists the [district] [c]ourt’s claim construction analysis.” Id. Therefore, the
`
`Court finds that IPR, if instituted by the PTAB, will “undoubtedly simplify the issues
`
`in this case.” Sec. First Innovations, LLC, 2024 WL 234720, at *3 (noting additionally
`
`that “[e]ven if IPR does not dispose of every patent claim at issue, validity issues
`
`5
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 6 of 8 PageID# 1986
`
`would still be streamlined because final written PTAB decisions have preclusive ef-
`
`fect”).
`
`In addition, contrary to SoundClear’s argument, see Resp. Opp’n at 13–15, “the
`
`fact that IPR has not yet been instituted does not weigh against granting a stay in
`
`this case.” Id. (citing Audio MPEG, Inc., 2015 WL 5567085, at *4). Rather, “[i]f the
`
`Court waits to grant a stay until the PTAB institutes [the] IPR petitions, the parties
`
`will necessarily engage in litigation efforts that would be duplicative of their efforts
`
`before the PTAB, which ‘is precisely what a stay seeks to avoid.’” Id. (quoting Sharpe
`
`Innovations, Inc., 2018 WL 11198604, at *3). For these reasons, the second factor
`
`favors granting the stay.
`
`
`
`
`
`C. Undue Prejudice to SoundClear
`
`The third factor is whether the nonmoving party would be unduly prejudiced
`
`or clearly disadvantaged. Centripetal Networks, LLC, 2023 WL 5127163, at *3.
`
`“[W]hether the patentee will be unduly prejudiced by a stay in the district court pro-
`
`ceedings . . . focuses on the patentee’s need for an expeditious resolution of its claim.”
`
`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). “To
`
`show undue prejudice, a patentee must demonstrate that monetary damages will be
`
`insufficient to remedy their losses.” Sec. First Innovations, LLC, 2024 WL 234720, at
`
`*4 (citing VirtualAgility Inc. at 1318–19). Here, it is undisputed that SoundClear is a
`
`non-practicing entity (“NPE”) which holds the patents at issue but does not directly
`
`compete with Google. Therefore, SoundClear “has no reasonable basis for requesting
`
`or recovering anything other than monetary damages . . . which of course, can be
`
`6
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 7 of 8 PageID# 1987
`
`determined regardless of any delay attributable to a stay.” Id. (quoting In re TLI
`
`Commc’ns, LLC, No. 1:14md2534, 2014 WL 12615711, at *2 (E.D. Va. Aug. 11, 2014)).
`
`
`
`SoundClear argues that it will suffer undue prejudice “as relevant witnesses’
`
`memories fade and relevant documents are lost.” Resp. Opp’n at 19. But “[t]he Fed-
`
`eral Circuit has made clear that by itself, the passage of time is not sufficient to con-
`
`clude that the non-moving party will suffer evidentiary prejudice.” Id. (citing Virtu-
`
`alAgility Inc., 759 F.3d at 1319) (“It is undoubtedly true, as many courts have ob-
`
`served, that with age and the passage of time, memories may fade and witnesses may
`
`become unavailable. Without more, however, these assertions . . . are not sufficient
`
`to justify a conclusion of undue prejudice.”); see also id. (noting protections available
`
`under the Federal Rules of Civil Procedure to mitigate effects of passage of time).
`
`Although the Court understands that SoundClear desires to move forward in this
`
`Court immediately, and will thus be prejudiced to some degree by delay in these pro-
`
`ceedings, the Court does not find that it would be subject to undue prejudice for pur-
`
`poses of the stay factors. Therefore, this factor also weighs in favor of a stay.
`
`* * *
`
`
`
`The Court has considered SoundClear’s additional arguments and does not
`
`find them persuasive. Because all three of the stay factors support staying this action,
`
`the Motion to Stay will be GRANTED.
`
`IV. CONCLUSION
`
`For the reasons stated above, the Motion to Stay (ECF No. 73) is GRANTED.
`
`This matter is hereby STAYED pending resolution of inter partes review
`
`7
`
`
`
`Case 2:24-cv-00321-AWA-DEM Document 84 Filed 03/31/25 Page 8 of 8 PageID# 1988
`
`proceedings.1 The parties shall notify this Court within fourteen (14) days of the date
`
`on which such proceedings conclude. The Clerk is REQUESTED to deliver a copy of
`
`this Order to counsel of record.
`
`IT IS SO ORDERED.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`March 31, 2025
`Norfolk, Virginia
`
`
`
` /s/
`
`Arenda L. Wright Allen
`United States District Judge
`
`
`
`
`1 Consistent with the stay, the Clerk is DIRECTED to administratively terminate
`the pending Motion to Dismiss (ECF No. 13), Motion to Transfer (ECF No. 38), and
`Objections to Magistrate Judge’s Order (ECF No. 82). The motions shall be reinstated
`once this case is returned to the active docket.
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
