United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE.
the Court is the Motion to Stay Case Pending Ex
Parte Reexamination (“Motion to Stay”) (Dkt.
No. 37), which was filed by Defendants Qualcomm Global
Trading Pte. Ltd., Samsung Austin Semiconductor LLC, Samsung
Electronics America, Inc., Samsung Electronics Co., Ltd.,
Samsung Semiconductor, Inc. (collectively
“Defendants”). After consideration, the Court
DENIES Defendants' Motion to Stay.
Supreme Court has long recognized that district courts have
broad discretion to manage their dockets, including the power
to grant a stay of proceedings.” Murata Mach. USA
v. Daifuku Co., 830 F.3d 1357, 1362 (Fed. Cir. 2016)
(quoting Procter & Gamble Co. v. Kraft Foods Glob.,
Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008) (citing
Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936))).
In deciding whether to grant a stay pending inter
partes review, this Court typically considers:
“(1) whether the stay will unduly prejudice the
nonmoving party; (2) whether the proceedings before the court
have reached an advanced stage, including whether discovery
is complete and a trial date has been set; and (3) whether
the stay will likely result in simplifying the case before
the court.” Intellectual Ventures II LLC v. BITCO
Gen. Ins. Corp., No. 6:15-CV-59, 2016 WL 4394485, at *2
(E.D. Tex. May 12, 2016) (quoting NFC Techs. LLC v. HTC
Am., Inc., No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2
(E.D. Tex. Mar. 11, 2015) (Bryson, J.)). While these factors
pertain to stays pending inter partes review, the
analysis is substantially the same for ex parte
SIMPLIFICATION OF THE ISSUES
argue that “[s]taying this case would substantially
simplify issues and foster judicial economy” because
“cancellation of the asserted claims would be binding
and dispositive to the entire case and resolve all issues
raised in Plaintiff's complaint.” (Dkt. No. 37 at
7.) Defendants argue that “the PTO has issued a final
office action rejecting all asserted claims in this case,
” increasing the likelihood that a stay would result in
a simplification of issues. (Id.) Defendants argue
that the rejection of the claims was a thorough rejection by
three experienced Examiners. (Id.) Defendants argue
that, in the event the final rejection is maintained after
appeal, this would result in an elimination of validity,
infringement, and damages issues. (Id. at 8.)
argues that “collateral estoppel precludes Defendants
from challenging invalidity (or infringement).” (Dkt.
No. 42 at 6.) KIPB therefore argues that the invalidity
issues will eventually be resolved through collateral
estoppel. (Id.) KIPB cites to cases from
this district, arguing that the cases suggest that this
factor does not weigh in favor of a stay (the Court will
address these cases further below). (Id. at 7.) KIPB
also argues that the Court should not weigh the chance of
success for the PTAB proceedings in determining whether to
grant a stay. (Id. at 7-8 (citing
VirtualAgility, Inc. v. Salesforce.com, Inc., 759
F.3d 1307, 1313 (Fed. Cir. 2014) (“[D]istrict courts
have no role in reviewing the PTAB's determinations
regarding the patentability of claims[.]”)).) KIPB
argues that ex parte reexamination proceedings do
not have an estoppel effect, limiting the amount of
simplification that would result from a stay. (Id.
“simplification of the issues” factor is
typically the most important of the three factors.
BITCO, 2016 WL 4394485, at *3 (quoting NFC,
2015 WL 1069111, at *2) (“[T]he most important factor
bearing on whether to grant a stay in this case is the
prospect that the inter partes review proceeding
will result in simplification of issues before the
Court.”). In analyzing whether a stay is appropriate
due to parallel proceedings before the PTAB, “district
courts have no role in reviewing the PTAB's
determinations regarding the patentability of claims . . .
.” See VirtualAgility, 759 F.3d at 1313.
discussed by KIPB, courts within this district have
previously addressed the simplification of the issues factor
in the ex parte reexamination context. In Eon
Corp.IP Holdings, LLC v. Sensus USA Inc., Magistrate
Judge Love concluded that a stay was unlikely to simplify the
issues in the case or create any judicial efficiencies. No.
6:09-CV-116, 2009 WL 9506927, at *3 (E.D. Tex. Dec. 18,
2009). Judge Love explained that “[i]t is not uncommon
for claims to be initially rejected in the re-examination
process.” Id. He also stated that, in a final
action as of 2008, “all claims of a patent have been
cancelled in only 11 % of ex parte reexaminations;
it is more than twice as likely that all claims will be
confirmed.” Id. Those percentages still are
approximately the same today, with the most recent ex
parte reexamination statistics showing that all claims
were confirmed in 21% of reexamination certificates, all
claims were cancelled in 12 % of reexamination certificates,
and claims were changed in 67 % of reexamination
certificates. Ex Parte Reexamination Filing Data,
September 30, 2018,
MacroSolve, Inc. v. Antenna Software, Inc.,
Magistrate Judge Mitchell addressed a situation where only a
request for ex parte reexamination had been filed.
No. 6:11-CV-00287-MHS-KNM, 2013 WL 7760889, at *2 (E.D. Tex.
Aug. 30, 2013). Judge Mitchell stated that:
the reexamination is far from complete. The ultimate outcome
is unpredictable. While it is possible “some of the
claims may change in this case, the interests of justice will
be better served by dealing with that contingency when and if
it occurs, rather than putting this case indefinitely on
hold.” Thus, this factor weighs against granting a
Id. (quoting EMG Tech., LLC v. Apple, Inc.,
2010 U.S. Dist. LEXIS 144656, at *8-9 (E.D. Tex. Nov. 15,
also points out that ex parte reexamination
proceedings do not have an estoppel effect, making those
proceedings distinguishable from inter partes review
proceedings, which do have an estoppel effect in certain
situations pursuant to 35 U.S.C. § 315. (Dkt. No. 42 at
8 (citing Eon Corp IP Holdings, 2009 WL 9506927 at
*2 (“[E]x parte reexamination proceedings have no
estoppel effect.”)).) Without any estoppel provision in
place for ex parte reexamination proceedings, those
proceedings are even less likely to result in simplification
of the issues.
the Court concludes that the outcome of any PTAB appeal is
far from clear at this time and that it would be improper for
the Court to speculate as to the result of that appeal at
this stage. This conclusion falls in line with the Federal
Circuit's instruction that “district courts have no
role in reviewing the PTAB's determinations regarding the
patentability of claims.” VirtualAgility, Inc. v.
Salesforce.com, Inc., 759 F.3d 1307, 1313 (Fed. Cir.
2014). This conclusion is also consistent with the decisions
reached by other courts within this district that were
discussed above. See MacroSolve, 2013 WL 7760889, at
*2; Eon Corp, 2009 WL 9506927, at *3. The Court also
finds KIPB's argument regarding the lack of any estoppel
effect for ex parte reexamination proceedings to be
persuasive. Weighing all of this together, the Court
concludes that this factor weighs against a stay.
WHETHER THE STAY WILL UNDULY PREJUDICE ...