Case 3:24-cv-00540-MHL Document 50 Filed 04/18/25 Page 1 of 7 PageID# 556
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Richmond Division
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`SOUNDCLEAR TECHNOLOGIES LLC,
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`Plaintiff,
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`V.
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`GOOGLE LLC,
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`Defendant.
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`Civil Action No. 3:24-cv-00540
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`MEMORANDUM OPINION
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`This matter comes before the Court on Defendant Google LLC’s (“Google”) Unopposed
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`Motion to Stay Pending Inter Partes Review (the “Motion to Stay” or the “Motion”).' (ECF
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`No. 47.) In the Motion, Google “moves this Court for an order staying this case pending
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`resolution of the inter partes review proceedings regarding patients that Plaintiff SoundClear
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`Technologies LLC (‘SoundClear’) has asserted in this case.” (ECF No. 47, at 1.) Google
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`represents that “SoundClear stated that it does not believe a stay is justified or appropriate” but
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`that for purposes of economy and efficiency, it will not oppose the relief set forth in [the
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`Motion].
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`»2 (ECF No. 48, at 16, n.l6.)
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`The matter is ripe for disposition. The Court dispenses with oral argument because the
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`materials before it adequately present the facts and legal contentions, and argument would not
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`aid in the decisional process.
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`' The Court employs the pagination assigned by the CM/ECF docketing system.
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`^ Google further represents that “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
`(ECF No. 48, at 16, n.l2.)
`not based upon SoundClear’s view of the merits of the motion.
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`Case 3:24-cv-00540-MHL Document 50 Filed 04/18/25 Page 2 of 7 PageID# 557
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`For the reasons ariiculated below, the Court will grant the Motion to Stay and will stay
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`this action. (ECFNo. 47.)
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`1. Procedural Background
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`A.
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`District Court Proceedings
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`On July 25, 2025, SoundCIcar filed the Complaint in this action. (ECF No. 1.) The
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`Complaint alleges that certain of Google's products and services infringe the three asserted
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`patents—U.S. Patent Nos. 11,069,337 (‘ihe ‘854 patent"), 11,244,675 (''the '675 patent"), and
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`9,223,487 ("the '487 patent"). (ECF No. 1, at 2-33.) On September 30, 2024, Google filed a
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`Motion to Dismiss Plaintiffs Complaint for Failure to State a Claim Under Rule 12(b)(6). (ECF
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`No. 16.)
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`On November 11, 2024, Google filed a Notice of Supplemental Authority "to bring to the
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`Court's attention a recent Order [issued November 8, 2024] by Judge Anthony 'i'rcnga in the
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`Eastern District of Virginia, Alexandria Division, in SoundClear Technologies, LLC v.
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`Amazon.com. Inc., No. 1:24-cv-01283-AJT-WBP .
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`.
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`. invalidating [the '487, '337, and '675
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`patents] based on patent ineligibility under 35 U.S.C. § 101.” (ECF No. 39; see also ECF No.
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`39-1.)
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`Approximately two months later, on January 16, 2025, SoundCIcar filed a Notice of
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`Supplemental Authority to bring to the Court's attention a recent Order by Judge Anthony
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`Trenga in the Eastern District of Virginia, Alexandria Division, in SoundClear Technologies,
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`LLC V, Amazon.com, //7C., No. 1:24-cv-01283-AJT-WBP", which "granted in part and denied in
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`part SoundClear's Motion to Alter Judgment pursuant to Federal Rule of Civil Procedure 59(c).”
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`(ECF No. 45, at 1.) Judge Trenga’s Order, issued on January 10, 2025, affirmed that court's
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`November 8, 2024 Order as to the '487 patent, but granted SoundClear's Motion to Alter
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`2
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`Case 3:24-cv-00540-MHL Document 50 Filed 04/18/25 Page 3 of 7 PageID# 558
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`Judgment as to the ’337 and ’675 patents, for which the court found *‘a plausible claim for patent
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`validity exists.” (ECF No. 45-1, at 3^.)
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`On April 8, 2025, Google filed the instant Motion to Stay. (BCF No. 47.)
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`H.
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`Inter Partes Review Proceedings
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`‘'[A] person who is not the owner of a patent may file with the [Patent Trial and Appeal
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`Board (‘PTAB’) of the United Slates Patent and Trademark Office] a petition to institute an inter
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`partes review of the patenf’ challenging the patent’s validity. 35 U.S.C. § 311. The PTAB
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`institutes inter partes review (IPR) if‘’there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. “If
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`IPR is instituted, the P'fAB must execute a formal written decision within a year, but that
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`deadline can be extended by six months for ‘good cause.’
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`Sec. First Innovations, LLC v.
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`Google LLC, No. 2:23-cv-97, 2024 WL 234720, at *1 (E.D. Va. Jan. 22, 2024) (quoting 35
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`U.S.C. § 316).
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`On January 31, 2025, Amazon.com, Inc., Amazon.com Services LLC, and Amazon Web
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`Services, Inc. filed a Petition for Inter Partes Review of the ’337 patent. (ECF No. 49-1.) On
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`February 27, 2025. the same entities filed a Petition for Inter Partes Review of the ’675 patent.
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`(ECF No. 49-2.)
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`II. Standard of Review
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`[T]he power to stay proceedings is incidental to the power inherent in every court to
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`control disposition of the causes on its docket with economy and effort for itself, for counsel, and
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`for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). “When a parly other than the
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`patent owner or a real party in interest files an IPR petition, the decision to stay district court
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`proceedings ‘is left to the district court’s discretion.’● 55
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`Sec. First Innovations, 2024 WL 234720,
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`3
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`Case 3:24-cv-00540-MHL Document 50 Filed 04/18/25 Page 4 of 7 PageID# 559
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`at * 1 (quoting Sharpe Innovalions, Inc. v. T-Mobile USA, No. 2:17-cr-351,2018 WL 11198604,
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`at *2 (E.D. Va. Jan. 10, 2018)); see also Va. Innovation Sciences, Inc. v. Samsung Electronics
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`Co.. Ltd.'No. 2;14-cv-217 (MSD), 2014 WL 13059257, at *1 (E.D. Va. Nov. 18, 2014) (noting
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`that although '‘the Lcahy-Smith America Invents Act does not contain a mandatory provision
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`requiring the stay of the district court patent infringement proceedings” when an IPR petition is
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`filed. "[Ijhis Court retains the discretion to stay this case pending the resolution of an IPR
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`proceeding”) (internal quotation marks omitted). “When determining whether to slay patent
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`litigation pending IPR, district courts consider the following three factors: (1) the stage of the
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`litigation: (2) whether the stay would simplify the issues before the court; and (3) whether the
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`stay would unduly prejudice the nonmoving party.” Sec. First Innovations, 2024 WL 234720, at
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`*l-*2 (citing Centripetal NetM>orks, LLC v. Keysight Tech., Inc., No. 2:22-cv-2 (EWH), 2023
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`WL 5127163, at
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`(E.D. Va. Mar. 20, 2023) (collecting cases)).
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`IIL Analysis
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`Upon review of the relevant factors, the Court concludes that a stay of this action pending
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`IPR proceedings is warranted. The Court addresses each factor in turn.
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`A.
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`The Early Stage of the Litigation Weighs in Favor of a Stay
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`The early state of the litigation in this case weighs in favor of a stay. “A stay pending
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`IPR at the early stages of a lawsuit has the potential to save a significant amount of time and
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`effort by all parties involved through a simplification of the issues presented.” Va. Innovation
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`Sciences, 2014 WL 13059257, at *2 (internal citation and quotation marks omitted). Here, the
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`case has not been set for trial, no pretrial deadlines have been established, and discovery has not
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`begun. See Centripetal Networks, LLC v. Keysight Tech., Inc., 2023 WL 5127163, at *4
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`(concluding that “the stage of litigation factor favors issuing a stay” when “| n |o scheduling order
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`4
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`has been entered and the parlies have yet to begin discovery”); Centripetal Networks. Inc. v.
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`Cisco Sys.. Inc., No. 2:18-cv-95 (HCM), 2019 WL 8888193, at
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`(E.D. Va. Feb. 25,2019)
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`(concluding that the early stage of the litigation ''weighs in favor of granting a stay” when the
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`court had not entered a scheduling order, a Markman hearing had not been set, and the case had
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`not been set for trial). Thus, this factor weighs in favor of a stay.
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`13.
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`A Stay Would Simplify the Issues Before the Court
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`A stay in this case would simplify the issues before the Court. “A stay pending the
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`resolution of administrative proceedings will simplify matters before the district court if the
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`administrative proceedings have the potential to dispose of claims entirely.” Centripetal
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`Networks. LLC v. Keysight Tech., Inc., 2023 WL 5127163, at *4. "Even if the administrative
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`proeeeding is unlikely to dispose of claims, a slay may simplify matters if it allows the
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`administrative proceedings time to build a record that assists the district court's claim
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`construction analysis.
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`Sec. First Innovations, 2024 WL 234720, at *2.
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`This case involves three patents—the '487, '337, and '675 patents. (ECF No. 1, at 5-7.)
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`On November 8, 2024, another court in this district held that the '487 patent is invalid under 35
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`U.S.C. § 101. SoundClear Tech., LLC v. Amazon.com, Inc., No. l:24-cv-01283 (AJT), 2024 WL
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`5237648, at *9 (E.D. Va. Nov. 8, 2024); (ECF No. 39-1, at 17.) On January 10, 2025, that court
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`denied SoundClear’s Motion to Alter Judgment as to the '487 patent. (ECF No. 45-1, at 4.)
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`Petitions for inter partes review of the '337 patent and the '675 patent were filed on January 31,
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`2025, and February 27, 2025, respectively. (ECF Nos. 49-1; 49-2.) Therefore, the IPR
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`proceedings have the potential to dispose of the remaining claims before the Court. "If the Court
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`waits to grant a stay until the PTAB institutes [the] IPR petitions, the parties will necessarily
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`engage in litigation efforts that would be duplicative of their efforts before the PTAB, which 'is
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`5
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`Case 3:24-cv-00540-MHL Document 50 Filed 04/18/25 Page 6 of 7 PageID# 561
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`precisely what a stay seeks to avoid. 5
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`Sec. First Innovations, 2024 WL 234720, at *3 (quoting
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`Sharpe Innovations, Inc. v. T-Mobile USA, Inc., No. 2:17-cr-351 (RCD), 2018 WL 11198604, at
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`*3 (E.D. Va. Jan. 10, 2018)). Thus, this factor weighs in favor of a stay.
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`C.
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`A Stay Would Not Unduly Prejudice SoundCIcar
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`'I'he lack of undue prejudice to SoundClear resulting from the imposition of a stay weighs
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`in favor of granting a stay. "'Whether the patentee will be unduly prejudiced by a stay in the
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`district court proceedings .
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`.
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`. focuses on the patentee’s need for an expeditious resolution of its
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`claim.” VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014)
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`(emphasis omitted). "To show undue prejudice, a patentee must demonstrate that monetary
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`damages will be insufficient to remedy their losses.” Sec. First Innovations, 2024 WL 234720,
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`at *4. Here, SoundClear does not seek injunctive relief its Complaint, and has never moved for
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`injunctive relief (ECF No. 1, at 33-34.)
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`"‘While not dispositive, this fact suggests that
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`monetary damages will be sufficient to remedy” SoundClear’s alleged losses. Id. at *4, n.3.
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`.\nd monetary damages “can be determined regardless of any delay attributable to a stay.” Id. at
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`*4. Therefore, this factor weights in favor of a stay.
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`IV. Conclusion
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`Because all three factors weigh in favor of a stay, the Court will grant Google’s
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`Unopposed Motion to Stay and stay this action. The Court will deny without prejudice Google’s
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`Motion to Dismiss, (ECF No. 16). See Centripetal Networks, 2Q23 WL 5127163, at *6 ("When
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`staying a case pending administrative review, courts often deny pending motions to dismiss
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`without prejudice
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`6
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`Case 3:24-cv-00540-MHL Document 50 Filed 04/18/25 Page 7 of 7 PageID# 562
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`to be refiled after the stay is lifted'') (citing Centripetal Nel\\>orks, Inc. v. Palo Alto Networks,
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`, No. 2:21-cv-137 (RCY), 2022 WL 610176, at *12 (E.D. Va. Mar. 1,2022) (collecting
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`cases)).
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`An appropriate Order shall issue.
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`Ml 19-1
`Date:
`Richmond, Virginia
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`M. Hani||Am(W^
`United States iTistricl Judge
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`7
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