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UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

Miami Division 

Case No.: 20-22051-CIV-GAYLES-OTAZO-REYES 

SISVEL INTERNATIONAL S.A., 3G 

LICENSING S.A., and SISVEL S.p.A., 

Plaintiffs, 

v. 

HMD AMERICA, INC. and HMD 

GLOBAL OY, 

Defendants. 

DEFENDANTS’ NOTICE REGARDING DECEMBER 8, 2021 STATUS CONFERENCE 

Case 1:20-cv-22051-DPG Document 136 Entered on FLSD Docket 12/01/2021 Page 1 of 3
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In an August 17, 2021 Order (ECF No. 116), the Court continued all pre-trial deadlines in 

this matter pending issuance of its claim construction order. In that same Order, the Court denied 

without prejudice a motion (ECF No. 107) by Defendants HMD America, Inc. and HMD Global 

Oy (“HMD”) to stay this matter in its entirety pending inter partes review of the patents asserted 

by plaintiffs Sisvel International S.A., 3G Licensing S.A., and Sisvel S.p.A. (“Sisvel”). In that 

Order, the Court set a telephonic status conference for December 8, 2021, to revisit, if necessary, 

the issues raised in HMD’s motion to stay. 

In advance of that December 8, 2021, conference, HMD hereby notifies the Court of the 

status of the inter partes review proceedings against Sisvel’s nine asserted patents. To date, the 

U.S. Patent and Trademark Office (“USPTO”) has issued institution decisions for seven of Sisvel’s 

nine patents asserted in this action and has instituted trial for six of those patents. Institution 

decisions for the two other asserted patents are expected on or before December 16, 2021 and 

January 15, 2022. HMD further notifies the Court that Special Master David Friedland has 

informed the parties of his intent to submit a Report and Recommendation on claim construction 

to the Court by December 13, 2021. 

The majority of Sisvel’s asserted patents are now in inter partes review at the USPTO. By 

addressing the validity and scope of those patents, the inter partes reviews will necessarily narrow 

the issues in this case—including issues which the Court might otherwise have to address when 

reviewing and adopting Special Master Friedland’s forthcoming report. Accordingly, at the 

December 8, 2021 hearing, HMD will ask the Court for leave to renew its motion to stay this 

matter in its entirety, with such stay to be entered immediately upon issuance of Special Master 

Friedland’s report and all objections to that report held in abeyance until the stay is lifted. 

Case 1:20-cv-22051-DPG Document 136 Entered on FLSD Docket 12/01/2021 Page 2 of 3
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Dated: December 1, 2021 Respectfully submitted, 

WILLIAM J. MCCABE, Esq. 

Admitted Pro hac vice 

wmccabe@perkinscoie.com 

GENE W. LEE, Esq. 

Admitted Pro hac vice 

glee@perkinscoie.com 

MATTHEW J. MOFFA, Esq. 

Admitted Pro hac vice 

mmoffa@perkinscoie.com 

PERKINS COIE LLP 

1155 Avenue of the Americas, 22nd floor 

New York, NY 10036 

Telephone: (212) 262-6900 

Facsimile: (212) 977-1649 

ADAM G. HESTER, Esq. 

Admitted Pro hac vice 

ahester@perkinscoie.com 

PERKINS COIE LLP 

33 East Main Street, Suite 201 

Madison, WI 53703 

Phone: (650) 838-4311 

Fax: (650) 838-4350 

MICHAEL A. CHAJON, Esq. 

Admitted Pro hac vice

mchajon@perkinscoie.com 

PERKINS COIE LLP 

700 Thirteenth Street N.W., Suite 800 

Washington, D.C. 20005 

Phone: (202) 654-3316 

Fax: (202) 624-9575

/s/ Joseph W. Bain 

JOSEPH W. BAIN, ESQ. 

Florida Bar No. 860360 

Email Address: jbain@shutts.com 

SHUTTS & BOWEN LLP 

1100 CityPlace Tower 

525 Okeechobee Boulevard 

West Palm Beach, Florida 33401 

Telephone: (561) 835-8500 

Facsimile: (561) 650-8530 

ATTORNEYS FOR DEFENDANTS 

HMD AMERICA, INC., AND HMD 

GLOBAL OY

CERTIFICATE OF SERVICE 

I hereby certify that all counsel of record who have consented to electronic service are 

being served with a copy of this document on December 1, 2021. 

/s/ Joseph W. Bain 

Joseph W. Bain 

WPBDOCS 11068250 1 

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