Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 1 of 18 PageID# 355
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`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`RICHMOND DIVISION
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`Plaintiff,
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`
`MEMORANDUM OF LAW IN SUPPORT OF DEFENDANT GOOGLE LLC’S
`UNOPPOSED MOTION TO STAY PENDING INTER PARTES REVIEW
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`
`SOUNDCLEAR TECHNOLOGIES LLC, §
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`
`§
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`
`§
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`§ Case No. 3:24-cv-00540-MHL
`§
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`§ JURY TRIAL DEMANDED
`§
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`§
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`§
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`§
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`
`
`v.
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`GOOGLE LLC,
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`
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`Defendant.
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 2 of 18 PageID# 356
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`III.
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`B.
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`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 2
`A.
`In an earlier litigation involving the same parties, another court in this
`District granted Google’s motion to stay. .............................................................. 2
`Another court in this District granted Amazon’s motion to stay in Amazon
`II pending IPR challenges. ..................................................................................... 2
`In this case, the stage of litigation is at its infancy. ............................................... 3
`C.
`LEGAL STANDARD ........................................................................................................ 4
`A.
`Inter Partes Review ................................................................................................ 4
`B.
`Stays Pending IPR.................................................................................................. 4
`IV. ARGUMENT ..................................................................................................................... 5
`A.
`The stage of the litigation strongly favors a stay. .................................................. 5
`B.
`A stay would simplify the issues before the court. ................................................ 8
`C.
`A stay would not unduly prejudice SoundClear. ................................................. 10
`CONCLUSION ................................................................................................................ 12
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`V.
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`-i-
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 3 of 18 PageID# 357
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`
`
`
`Cases
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`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Audio MPEG, Inc. v. HP Comp.,
`No. 2:15-cv-00073-MSD-RJK, 2015 WL 5567085 (E.D. Va. Sept. 21, 2015) ...............5, 6, 11
`
`Centripetal Networks, Inc. v. Cisco Sys.,
`No. 2:18-cv-00094-EWH-LRL, 2019 WL 8888193 (E.D. Va. Feb. 25, 2019) .........................7
`
`Centripetal Networks, LLC v. Keysight Techs., Inc.,
`No. 2:22-cv-00002-EWH-DEM, 2023 WL 5127163 (E.D. Va. Mar. 20, 2023) .......................7
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)..................................................................................................8
`
`Health Diagnostic Lab’y, Inc. v. Bos. Heart Diagnostics Corp.,
`No. 3:14CV796-HEH, 2015 WL 13879824 (E.D. Va. Feb. 4, 2015)........................................6
`
`Indivior Inc. v. Dr. Reddy’s Labs., S.A.,
`930 F.3d 1325 (Fed. Cir. 2019)..................................................................................................8
`
`Limelight Networks, Inc. v. XO Commc’ns, LLC,
`No. 3:15-cv-720-JAG, ECF No. 451 (E.D. Va. Apr. 7, 2017) ................................................11
`
`Sec. First Innovations, LLC v. Google LLC,
`No. 2:23cv97, 2024 WL 234720 (E.D. Va. Jan. 22, 2024)..............................................5, 8, 11
`
`Sharpe Innovations, Inc. v. T-Mobile USA, Inc.,
`No. 2:17-cv-000351-RGD-DEM, 2018 WL 11198604 (E.D. Va. Jan. 10,
`2018) ..........................................................................................................................................9
`
`In re TLI Commc’ns LLC,
`No. 1:14-md-02534-TSE-JFA, 2014 WL 12615711 (E.D. Va. Aug. 11, 2014)..................6, 10
`
`Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd.,
`No. 2:14CV217, 2014 WL 13059257 (E.D. Va. Nov. 18, 2014) ....................................5, 6, 10
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)......................................................................................8, 10, 11
`
`XY, LLC v. Trans Ova Genetics, L.C.,
`890 F.3d 1282 (Fed. Cir. 2018)........................................................................................5, 9, 10
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`-ii-
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 4 of 18 PageID# 358
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`
`Statutes
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`35 U.S.C. § 311 ................................................................................................................................4
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`35 U.S.C. § 311(b) ...........................................................................................................................4
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`35 U.S.C. § 314 ................................................................................................................................4
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`35 U.S.C. § 315(b) .........................................................................................................................11
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`35 U.S.C. § 316(a)(11) .....................................................................................................................4
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`-iii-
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 5 of 18 PageID# 359
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`I.
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`INTRODUCTION
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`Defendant Google LLC (“Google”) seeks this unopposed stay of this patent litigation
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`pending inter partes review (“IPR”). Another court in this District recently granted a nearly
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`identical motion in SoundClear Techs., LLC v. Amazon.com, Inc., No. 1:24-cv-01283-AJT-WBP,
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`ECF No. 140 (E.D. Va. Mar. 26, 2025) (“Amazon II”), a case filed by the same plaintiff asserting
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`the same three patents involved here. In Amazon II, the court analyzed the relevant factors and
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`stayed the case pending IPR. The same outcome is warranted here: Google’s unopposed motion to
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`stay should also be granted. All the relevant factors favor a stay:
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`●
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`Stage of the Litigation. This factor strongly favors a stay when no pretrial
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`conference has been set, no fact discovery and claim construction have started, and no trial date
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`has been set, which are all true here. That a motion to dismiss is pending makes no difference–this
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`case is still at its infancy. Thus, this factor strongly favors a stay.
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`●
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`Simplification of the Issues. This case involves three patents. The claims for one
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`patent have already been held patent ineligible under 35 U.S.C. § 101 in Amazon II. As for the two
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`remaining patents, all claims are challenged as invalid in pending IPRs before the Patent Trial and
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`Appeal Board (“PTAB”). If those claims are cancelled, then Plaintiff will lose any cause of action
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`based on those claims, rendering the litigation moot. Where, as here, IPR proceedings potentially
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`dispose of all remaining claims, the simplification factor favors a stay.
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`●
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`No 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, it is undisputed
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`that Plaintiff does not directly compete with Google. Thus, this factor favors a stay.
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`1
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`To avoid wasting time and resources over ultimately unnecessary disputes, this Court
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`should grant Google’s unopposed motion to stay pending IPR.
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`II. BACKGROUND
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`A.
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`In an earlier litigation involving the same parties, another court in this District
`granted Google’s motion to stay.
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`In an earlier litigation, SoundClear filed a complaint on May 1, 2024 against Google,
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`alleging infringement of three patents involving audio technologies that were originally obtained
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`by JVC Kenwood. SoundClear Technologies LLC v. Google LLC, No. 2:24-cv-00321-AWA-
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`DEM, ECF No. 84 at *1 (E.D. Va. Mar. 31, 2025) (“Google I”).1 Google moved to dismiss based
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`on patent ineligibility under 35 U.S.C. § 101 and for failure to state a plausible claim for relief. Id.,
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`at *2. Google also moved to transfer, and SoundClear requested venue discovery. Id.
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`On February 10, 2025, Google initiated IPR proceedings for 2 of the 3 patents asserted in
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`that case. One week later, Google moved to stay the district court case pending IPR. Id., at *2-3.
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`No Rule 16(b) conference or scheduling order had yet occurred, and “discovery ha[d] not begun,
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`claim construction ha[d] not occurred, and no trial date ha[d] been set.” Id., at *2. On March 31,
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`2025, the Court granted Google’s motion, and stayed Google I pending IPR. Id., at *7-8.
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`B.
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`Another court in this District granted Amazon’s motion to stay in Amazon II
`pending IPR challenges.
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`On July 25, 2024, SoundClear filed a complaint against Amazon.com, Inc. and affiliates,
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`(collectively, “Amazon”) asserting the same three patents asserted here: U.S. Patent Nos.
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`11,069,337 (the “’337 patent”); 11,244,675 (the “’675 patent”); and 9,223,487 (the “’487 patent”)
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`(collectively, “Asserted Patents”). Amazon II, No. 1:24-cv-1283-AJT-WBP, ECF No. 1.2 These
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`1 In Google I, SoundClear asserted U.S. Patent Nos. 9,031,259 (the “’259 patent”); 9,070,374 (the
`“’374 patent”); and 9,804,819 (the “’819 patent”).
`2 SoundClear previously sued Amazon in SoundClear Technologies, LLC v. Amazon.com, Inc.,
`No. 2:24-cv-00320-AWA-LRL, ECF No. 1 (E.D. Va. May 1, 2024) (“Amazon I”).
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`2
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`patents were also originally obtained from JVC Kenwood. Id. at ¶¶ 58-59. In Amazon II, Amazon
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`moved to dismiss based on patent ineligibility under 35 U.S.C. § 101 and for failure to state a
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`plausible claim for relief. ECF Nos. 31 and 32. Amazon also moved to transfer. ECF Nos. 40 and
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`41. On November 8, 2024, the court denied Amazon’s transfer motion, and initially granted
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`Amazon’s motion to dismiss in its entirety. ECF No. 63. Later, the court revised its decision,
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`holding only the ’487 patent ineligible under § 101. ECF No. 65. SoundClear has indicated that it
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`plans to appeal the court’s patent ineligibility decision for the ’487 patent. ECF No. 106 at 10 n.3,
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`45, and 52.
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`On January 31, 2025 and February 27, 2025, Amazon filed IPR petitions challenging the
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`validity of all claims of the remaining ’337 and ’675 patents. Exs. 1-2. Amazon then moved to stay
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`pending IPR. ECF No. 109. In Amazon II, the parties had begun discovery, including initial
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`disclosures, written discovery requests, document production, and depositions. ECF No. 109 at 3.
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`On March 26, 2025, the court granted Amazon’s motion, and stayed Amazon II pending IPR. ECF
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`No. 140. SoundClear estimates that the PTAB will decide whether to institute Amazon’s IPRs by
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`September 2025. ECF No. 126 at *3.
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`C.
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`In this case, the stage of litigation is at its infancy.
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`On July 25, 2024, SoundClear filed its complaint in the present case against Google
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`(“Google II”) alleging infringement of the same three patents asserted in Amazon II: the ’337, ’675,
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`and ’487 patents. ECF No. 1. On September 30, 2024, Google moved to dismiss based on patent
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`ineligibility under 35 U.S.C. § 101 and for failure to state a plausible claim for relief. Dkts. 16 and
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`17. The parties filed notices of supplemental authority based on developments in Amazon II. Dkts.
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`39 and 45. Google’s motion to dismiss is currently pending.
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`In this case, no scheduling order has been entered. No trial date or pretrial schedule has
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`been set. Fact discovery has not opened. No written discovery requests have been promulgated, no
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`3
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`subpoenas have been issued, and no depositions have been taken or noticed. No claim construction
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`terms or proposed constructions have been formally exchanged, and no claim construction briefing
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`has been filed.
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`III. LEGAL STANDARD
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`A.
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`Inter Partes Review
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`Parties may challenge the validity of a patent before the PTAB through IPR. 35 U.S.C. §
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`311. An IPR proceeding is initiated by filing a petition with the PTAB, requesting that one or more
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`of the patent’s claims be canceled as unpatentable under 35 U.S.C. § 102 (novelty) or § 103
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`(obviousness). 35 U.S.C. § 311(b). The PTAB will institute IPR of the patent claims if “there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims
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`challenged in the petition.” 35 U.S.C. § 314. If IPR is instituted, the PTAB must execute a final
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`written decision within a year, but that deadline can be extended by six months for “good cause.”
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`35 U.S.C. § 316(a)(11).
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`B.
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`Stays Pending IPR
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`“The power to stay proceedings is incidental to the power inherent in every court to control
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`disposition of the causes on its docket with economy of time and effort for itself, for counsel, and
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`for litigants.” Google I, No. 2:24-cv-00321-AWA-DEM, ECF No. 84 at *3-4 (citing Landis v. N.
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`Am. Co., 299 U.S. 248, 254 (1936)). When an IPR petition is filed, the decision to stay district
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`court proceedings “is left to the district court’s discretion.” Id. (quoting Sec. First Innovations,
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`LLC v. Google LLC, No. 2:23cv97, 2024 WL 234720, at *1 (E.D. Va. Jan. 22, 2024) (“SFI”)).
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`“District courts consider the following three factors in deciding whether to issue a stay pending
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`IPR proceedings:
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`(1) the stage of the litigation;
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`(2) whether the stay would simplify the issues before the court; and
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`4
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`(3) whether the stay would unduly prejudice the nonmoving party.”
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`Id. (citations omitted). A motion to stay pending IPR is proper even when the asserted patents are
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`challenged by IPR by a different party. XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1295
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`(Fed. Cir. 2018) (“the fact that the Defendant in this case and the Petitioners in an inter partes
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`review at the Board were different parties is of no consequence”).
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`IV. ARGUMENT
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`The purpose of the statute establishing the IPR proceedings was “to establish a more
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`efficient and streamlined patent system that will improve patent quality and limit unnecessary and
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`counterproductive litigation costs.” Audio MPEG, Inc. v. HP Comp., No. 2:15-cv-00073-MSD-
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`RJK, 2015 WL 5567085, at *2 (E.D. Va. Sept. 21, 2015) (citing 77 Fed. Reg. 48,680-01 (Aug. 14,
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`2012)). Staying litigation pending IPR furthers this goal of “limit[ing] unnecessary and
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`counterproductive litigation costs.” Id. Consequently, courts in this District have commonly
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`exercised their discretion to stay cases pending the PTAB’s decision to institute IPR proceedings.
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`See, e.g., SFI, 2024 WL 234720, at *5 (staying case before IPR institution); Google I, No. 2:24-
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`cv-00321-AWA-DEM, ECF No. 84 (same); Amazon II, No. 1:24-cv-01283-AJT-WBP, ECF No.
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`109 (same). Granting a stay would further the goals contemplated by Congress, and, as discussed
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`below, all three factors favor a stay in this case.
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`A.
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`The stage of the litigation strongly favors a stay.
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`“A stay pending IPR at the early stages of a lawsuit has the potential to save ‘a significant
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`amount of time and effort by all parties involved through a simplification of the issues presented.’”
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`Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd., No. 2:14CV217, 2014 WL 13059257, at *2
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`(E.D. Va. Nov. 18, 2014) (“VIS”). Thus, courts in this District have held that an early stage of
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`litigation “heavily favors” a stay. Id. at *2 (citing VirtualAgility Inc. v. Salesforce.com, Inc., 759
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`5
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`F.3d 1307, 1317 (Fed. Cir. 2014)3 (for a motion to stay pending CBM review, stage of litigation
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`“factor heavily favors Defendants” where “there remained eight months of fact discovery, the joint
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`claim construction statements had yet to be filed, and jury selection was a year away”)).
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`In VIS, the court explained that the case was “at an early stage: discovery has barely
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`begun—discovery is far from ‘complete’—and no trial date has been set.” Id. Therefore, the court
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`held that “the early stage of this litigation ‘heavily favors’ a stay.” Id. (emphasis added).
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`Likewise, in Audio MPEG, the court explained that discovery had “not begun in this case.
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`Additionally, no trial date has been set, the Court has not set a Markman hearing, and the Court
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`has not set a scheduling conference. Therefore, this case remains in its infancy, which strongly
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`supports granting a stay.” Audio MPEG, 2015 WL 5567085, at *4 (emphasis added); see also id.
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`at *6 (“The fact that this case is in such an early stage heavily favors granting a stay.”) (emphasis
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`added); Health Diagnostic Lab’y, Inc. v. Bos. Heart Diagnostics Corp., No. 3:14CV796-HEH,
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`2015 WL 13879824, at *2 (E.D. Va. Feb. 4, 2015) (where the court had not entered a scheduling
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`order and no discovery had taken place, the stage of litigation factor was “particularly
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`compelling”) (emphasis added).
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`The same was true in Google I, No. 2:24-cv-00321-AWA-DEM, ECF No. 84. There, the
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`court explained that “no Rule 16(b) scheduling order has been entered, discovery has not begun,
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`and no trial date has been set.” Id. at *4. Accordingly, the court found that “the ‘stage of litigation
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`factor favors issuing a stay.’” Id. at *5 (citations omitted).
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`3 VirtualAgility is pertinent to whether to stay this case pending IPR even though VirtualAgility
`involved a related, but different, administrative review of patents called a covered business method
`(CBM) review. In re TLI Commc’ns LLC, No. 1:14-md-02534-TSE-JFA, 2014 WL 12615711, at
`*1 (E.D. Va. Aug. 11, 2014) (“[D]efendants’ supplemental brief correctly points out that
`VirtualAgility is pertinent to the instant matter even though that case involved CBM review by the
`PTO, rather than inter partes review (IPR), as involved here.”).
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`6
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`Similar to VIS, Audio MPEG, Health Diagnostic, and Google I, this case is at its infancy.
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`Fact discovery has not opened, and the claim construction process has not begun. No pretrial
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`schedule or trial date has been set. See generally II.C above. Thus, just like those cases, the stage
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`of the litigation factor here strongly favors a stay.
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`The analysis under this factor focuses on the stage of the litigation, and not how long the
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`case has been pending. In Centripetal Networks, LLC v. Keysight Techs., Inc., for example, the
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`court explained:
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`While the Court recognizes that this case has been pending for over a year through no fault
`of the parties, the matter is still in its infancy. No scheduling order has been entered and
`the parties have yet to begin discovery. Therefore, the stage of litigation factor favors
`issuing a stay.
`No. 2:22-cv-00002-EWH-DEM, 2023 WL 5127163, at *4 (E.D. Va. Mar. 20, 2023) (“Keysight”)
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`(emphasis added). Similarly, in Centripetal Networks, Inc. v. Cisco Sys., the court explained:
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`Although Plaintiff filed its action one year ago, there is a pending Motion to Dismiss.
`Therefore, the Court has not yet entered a scheduling order for discovery, a Markman
`hearing has not been set, and the case has not been set for trial. Accordingly, this matter is
`still in the early stages of litigation and this factor weighs in favor of granting a stay.
`No. 2:18-cv-00094-EWH-LRL, 2019 WL 8888193, at *3 (E.D. Va. Feb. 25, 2019) (“Cisco”)
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`(emphasis added). And in Google I, the court explained that “[a]lthough it has been pending ten
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`months since service of the Complaint, this litigation is still in the early stages. Due to the pending
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`motion to dismiss, Google has not yet answered.” No. 2:24-cv-00321-AWA-DEM, ECF No. 84 at
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`*4 (emphasis added). In Keysight, Cisco, and Google I, the fact that a motion to dismiss was
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`pending made no difference–those cases were still in their infancy, and the stage of litigation factor
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`still favored a stay.4
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`4 Even if this factor considered the time between service and the filing of a motion to stay, the
`present case has been pending for far shorter than was the case in Keysight, Cisco, and Google I.
`ECF No. 12 ¶ 1.
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`7
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`The reason for staying the case at the outset is simple and compelling: where, as here, the
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`parties have just begun litigating, a stay will conserve both the Court’s and the parties’ time and
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`resources by not litigating claims that may eventually be rendered moot. Accordingly, the stage of
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`the litigation is an important factor that strongly favors a stay.
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`B.
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`A stay would simplify the issues before the court.
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`The simplification factor favors a stay. “A stay pending the resolution of administrative
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`proceedings will simplify matters before the district court if the administrative proceedings have
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`the potential to dispose of claims entirely.” Google I, No. 2:24-cv-00321-AWA-DEM, ECF No.
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`84, at *5 (quoting Keysight, 2023 WL 5127163, at *4); see also VirtualAgility, 759 F.3d at 1314
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`(simplification factor favored a stay because PTAB “review could dispose of the entire litigation:
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`the ultimate simplification of issues.”); SFI, 2024 WL 234720, at *3 (same).
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`Here, the ’487 patent has already been held patent ineligible under 35 U.S.C. § 101.
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`Amazon II, Nos. 63 and 84. And the IPR petitions pending before the PTAB are for all claims of
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`the remaining ’337 and ’675 patents. Exs. 1-2. Thus, a stay here will simplify matters because
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`cancellation by the PTAB would moot all remaining claims, disposing of the entire litigation.
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`Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1349 (Fed. Cir. 2019) (“when a claim is
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`cancelled, the patentee loses any cause of action based on that claim, and any pending litigation in
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`which the claims are asserted becomes moot.”); Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d
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`1330, 1344 (Fed. Cir. 2013) (“cancellation extinguishes the underlying basis for suits based on the
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`patent”).
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`In addition, “even where the administrative proceeding will not dispose of all claims, ‘a
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`stay may simplify matters if it allows the administrative proceedings time to build a record that
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`assists the [district] [c]ourt’s claim construction analysis.’” Google I, No. 2:24-cv-00321-AWA-
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`DEM, ECF No. 84, at *5 (citing Keysight, 2023 WL 5127163, at *4); see also SFI, 2024 WL
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`8
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`234720, at *3 (“statements made in the course of an IPR proceeding concerning the patent in issue
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`may also add to the patent’s prosecution history, which could assist this Court’s claim construction
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`analysis”) (quoting TLI, 2014 WL 12615711, at *2). Thus, if instituted, a stay will “undoubtedly
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`simplify the issues in this case.” Google I, No. 2:24-cv-00321-AWA-DEM, ECF No. 84 at *5
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`(citing SFI, 2024 WL 234720, at *1).
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`Furthermore, “the fact that IPR has not yet been instituted does not weigh against granting
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`a stay in this case.” Google I, No. 2:24-cv-00321-AWA-DEM, ECF No. 84 at *6 (citing SFI, 2024
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`WL 234720, at *3). This District “does not disfavor stays before IPR is instituted, and this Court
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`has granted a stay in many such instances.” Sharpe Innovations, Inc. v. T-Mobile USA, Inc., No.
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`2:17-cv-000351-RGD-DEM, 2018 WL 11198604, at *3 (E.D. Va. Jan. 10, 2018) (collecting
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`cases). Indeed, “[i]f the Court waits to grant a stay until the PTAB institutes [the] IPR petitions,
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`the parties will necessarily engage in litigation efforts that would be duplicative of their efforts
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`before the PTAB, which ‘is precisely what a stay seeks to avoid.’” Google I, No. 2:24-cv-00321-
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`AWA-DEM, ECF No. 84 at *6 (quoting SFI, 2024 WL 234720, at *3); see also Sharpe, 2018 WL
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`11198604, at *3 (same).
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`Simplification still favors a stay here even though Amazon, not Google, is the petitioner
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`for the filed IPRs. Exs. 1-2. This is because of the “issue-preclusive effect on any pending or co-
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`pending actions involving the patent.” XY, 890 F.3d at 1294 (emphasis added). The Federal Circuit
`
`has repeatedly “applied collateral estoppel to such co-pending cases” because a patent owner has
`
`“had his ‘day in court’” and “a defendant should not have to continue ‘defend[ing] a suit for
`
`infringement of [an] adjudged invalid patent.’” Id. (citations omitted) (emphasis added). The
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`Federal Circuit specifically explained that: “the fact that the Defendant in this case and the
`
`Petitioners in an inter partes review at the Board were different parties is of no consequence.” Id.
`
`
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`9
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 14 of 18 PageID# 368
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`at 1295. This is because “[a]n unrelated accused infringer may . . . take advantage of an
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`unenforceability decision under the collateral estoppel doctrine.” Id. (citations omitted). Thus, the
`
`fact that it was Amazon, not Google, that petitioned for IPRs is of no consequence. The
`
`simplification factor still favors a stay.
`
`C.
`
`A stay would not unduly prejudice SoundClear.
`
`Just like in Google I, the undue prejudice factor here also favors a stay. “[W]hether the
`
`patentee will be unduly prejudiced by a stay in the district court proceedings . . . focuses on the
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`patentee’s need for an expeditious resolution of its claim.” Google I, No. 2:24-cv-00321-AWA-
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`DEM, ECF No. 84 at *6 (emphasis original) (quoting VirtualAgility, 759 F.3d at 1318). “To show
`
`undue prejudice, a patentee must demonstrate that monetary damages will be insufficient to
`
`remedy their losses.” Id. (quoting SFI, 2024 WL 234720, at *4) (emphasis added); see also VIS,
`
`2014 WL 13059257, at *2 (as a general rule, non-practicing entities cannot show undue prejudice);
`
`TLI, 2014 WL 12615711, at *2 (same).
`
`Here, as in Google I, “it is undisputed that SoundClear is a non-practicing entity (‘NPE’)
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`which holds the patents at issue but does not directly compete with Google.” Google I, No. 2:24-
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`cv-00321-AWA-DEM, at *6. Therefore, the same conclusion is warranted: “SoundClear ‘has no
`
`reasonable basis for requesting or recovering anything other than monetary damages . . . which of
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`course, can be determined regardless of any delay attributable to a stay.’” Id., at *5-6 (citations
`
`omitted).
`
`Additionally, SoundClear has never sought injunctive relief, which undercuts any
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`purported need for expeditious resolution of its claim. In VirtualAgility, the Federal Circuit noted:
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`“Although this is not dispositive, we note that [plaintiff] did not move for a preliminary injunction
`
`against Defendants.” 759 F.3d at 1319. The court went on to explain that “the fact that it was not
`
`worth the expense to ask for this remedy contradicts [plaintiff’s] assertion that it needs injunctive
`
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 15 of 18 PageID# 369
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`
`relief as soon as possible.” Id. Similarly, in Limelight Networks, Inc. v. XO Commc’ns, LLC, No.
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`3:15-cv-720-JAG, ECF No. 451 at *2 n.1 (E.D. Va. Apr. 7, 2017), the court noted that “The brief
`
`timeframe for the current continuation, coupled with the fact that [plaintiff] did not seek a
`
`preliminary injunction in this case, lead the Court to conclude that this delay will not unduly
`
`prejudice [plaintiff].” And recently, in SFI, the court noted that plaintiff had “not moved for a
`
`preliminary injunction, nor has SFI sought any form of relief other than damages.” SFI, 2024 WL
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`234720, at *4 n.3. The court explained that “[w]hile not dispositive, this fact suggests that
`
`monetary damages will be sufficient to remedy [plaintiff’s] losses.” Id. (citations omitted).
`
`Here, SoundClear does not seek injunctive relief in its complaint, and has never moved for
`
`a preliminary injunction. ECF No. 1 at 33-34. Thus, as in VirtualAgility, Limelight, and SFI,
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`SoundClear has not sought any form of relief other than monetary damages, which can be
`
`determined regardless of any delay from a stay.
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`Nor has SoundClear suffered any undue prejudice from delay. As a preliminary matter,
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`“[d]elays based on statutory frameworks, such as those pursuant to IPR proceedings under AIA §
`
`18(b), do not normally cause undue prejudice.” Audio MPEG, 2015 WL 5567085, at *4 (emphasis
`
`added). Congress granted defendants the right to file an IPR petition challenging a patent within a
`
`year of being served with a complaint alleging infringement of that patent. 35 U.S.C. § 315(b).
`
`Here, Amazon filed its IPR petitions within seven months of SoundClear’s complaint, and well
`
`within the year allowed by statute, Exs. 1-2, and Google filed its motion to stay within two weeks
`
`of the Amazon II court’s stay decision. This is similar to time frames considered non-prejudicial
`
`by other courts in this District. See, e.g., SFI, 2024 WL 234720, at *4 (“Google filed its IPR
`
`petitions within eight months of the complaint and filed the instant motion to stay just four days
`
`after filing its last IPR petition—neither of which suggests dilatory tactics.”).
`
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 16 of 18 PageID# 370
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`The undue prejudice factor favors a stay.
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`V. CONCLUSION
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`Because all relevant factors favor staying the case, and because this motion is unopposed,5
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`Google respectfully requests that the Court stay this case pending resolution of the inter partes
`
`review proceedings.
`
`
`
`Date: April 8, 2025
`
`Respectfully submitted,
`
`
`
`
`/s/ Stephen E. Noona
`Stephen E. Noona (VSB No. 25367)
`KAUFMAN & CANOLES, P.C.
`150 W. Main Street, Suite 2100
`Norfolk, VA 23510-1665
`Telephone: (757) 624-3239
`Facsimile: (888) 360-9092
`senoona@kaufcan.com
`
`
`PAUL HASTINGS LLP
`
`
`Robert W. Unikel (pro hac vice)
`Douglas L. Sawyer (pro hac vice)
`Mark T. Smith (pro hac vice)
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`robertunikel@paulhastings.com
`dougsawyer@paulhastings.com
`marksmith@paulhastings.com
`
`
`
`5 SoundClear stated that it does not believe a stay is justified or appropriate. It stated, however,
`that for purposes of economy and efficiency, it will not oppose the relief set forth in this motion.
`SoundClear declined to oppose the motion solely in view of the particular circumstances at issue
`in connection with the present motion (e.g., Judge Trenga having granted a motion to stay in
`Amazon II, in which the same patents are at issue) and not based upon SoundClear’s view of the
`merits of the motion. Accordingly, Google will not rely on the grant of a stay in this case in support
`of any request or argument in favor of a stay in any other case or future motion between Google
`and SoundClear.
`
`
`12
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 17 of 18 PageID# 371
`
`
`Robert Laurenzi (pro hac vice)
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`robertlaurenzi@paulhastings.com
`
`Joshua Yin (pro hac vice)
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1884
`Facsimile: (650) 320-1984
`joshuayin@paulhastings.com
`
`Ariell N. Bratton (pro hac vice)
`4655 Executive Drive, Suite 350
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`ariellbratton@paulhastings.com
`
`
`Counsel for Defendant Google LLC
`
`13
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`Case 3:24-cv-00540-MHL Document 48 Filed 04/08/25 Page 18 of 18 PageID# 372
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 8, 2025, I will electronically file the foregoing with the Clerk
`
`of Court using the CM/ECF system, which will send a notification of such filing (NEF) to the
`
`following:
`
`Chandran B. Iyer (VSB No. 94100)
`Kevin H. Sprenger (VSB No. 98588)
`Steven Reynolds (pro hac vice)
`Austin Ciuffo (pro hac vice)
`Matthew R. Harkins (pro hac vice)
`James J. Hatton (pro hac vice)
`DAIGNAULT IYER LLP
`8229 Boone Boulevard, Suite 450
`Vienna, VA 22182
`cbiyer@daignaultiyer.com
`ksprenger@daignaultiyer.com
`sreynolds@daignaultiyer.com
`aciuffo@daignaultiyer.com
`mharkins@daignaultiyer.com
`jhatton@daignaultiyer.com
`
`Counsel for