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 HMD AMERICA, INC. AND HMD GLOBAL OY’S 

MOTION TO STAY LITIGATION PENDING INTER PARTES REVIEW 

AND MEMORANDUM OF LAW 

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TABLE OF CONTENTS 

MEMORANDUM OF LAW .......................................................................................................... 1

I. INTRODUCTION ............................................................................................................... 1

II. BACKGROUND ................................................................................................................. 2

III. LEGAL STANDARDS ....................................................................................................... 5

IV. ARGUMENT ....................................................................................................................... 6

A. Sisvel Is A Non-Practicing Entity That Would Not Be Unduly Prejudiced By A Stay 

Or Be Placed At A Clear Tactical Disadvantage ............................................................. 6

B. A Stay Would Significantly Simplify The Issues ............................................................ 8

1. The IPRs Will Likely Invalidate All Or Most Of The Asserted Patents ...................... 8

2. The IPRs Will Likely Significantly Simplify The Issues And Reduce The Scope Of 

This Case ....................................................................................................................... 9

C. This Case Is At An Early Stage, And A Stay Would Be Appropriate At This Time..... 11

D. The Totality Of Circumstances Favors A Stay .............................................................. 12

V. CONCLUSION .................................................................................................................. 14

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TABLE OF AUTHORITIES 

Intell. Ventures I, LLC v. Motorola Mobility LLC, 

Case No. 1-61358-CIV, 2014 WL 12584301 (S.D. Fla. July 17, 2014)....................6, 9, 10, 11

Prisua Eng’g Corp. v. Samsung Elecs. Co., 

472 F. Supp. 3d 1183 (S.D. Fla. 2020) ............................................................................6, 7, 11

Rothschild Storage Retrieval Innovations LLC v Motorola Mobility LLC, 

Civil Action No. 14-22659, 2015 WL 12715618 (S.D. Fla. May 11, 2015) ................... passim

Targus Int’l LLC v. Group III Int’l, Inc., 

Civil Action No. 20-21435, 2021 WL 542675 (S.D. Fla. Jan. 8, 2021) .......................... passim

STATUTES

35 U.S.C. § 314 ................................................................................................................................3

35 U.S.C. § 315(e)(2) .....................................................................................................................11

35 U.S.C. § 316(a)(11) .....................................................................................................................5

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Defendants HMD America, Inc., and HMD Global Oy (“HMD”), by and through 

counsel, pursuant to Local Rule 7.1, respectfully move this Court to stay this action in view of 

inter partes review petitions challenging the validity of all nine asserted patents in this case 

MEMORANDUM OF LAW 

I. INTRODUCTION 

This action should be stayed because inter partes reviews (“IPRs”) before the U.S. Patent 

and Trademark Office are likely to invalidate all or most of the nine asserted patents. At a 

minimum, the IPRs will significantly narrow the issues and scope of discovery and trial in this 

case. The parties and the Court should not waste their resources in litigating patents that are likely 

to be invalidated in the IPRs. 

A stay would not unduly prejudice Plaintiffs (“Sisvel”) or put them at a clear tactical 

disadvantage. Sisvel is a non-practicing entity whose business is to monetize its patents. The 

remedy for any patent infringement in this case would be monetary damages, which is the only 

remedy expressly sought by Sisvel. A stay would not diminish Sisvel’s ability to recover damages, 

and pre-judgment interest would account for any delay. A stay would simplify the issues and 

scope of the case for trial. HMD expects that all or most of the Sisvel patents asserted here will 

be invalidated by the IPRs. Even if fewer than all asserted patents are invalidated, that would 

significantly reduce the scope of the case. A stay would be appropriate at this time because the 

present case is at an early stage. No fact depositions have been taken, document discovery is still 

in process, and deadlines for expert discovery and trial are subject to planned modification. A stay 

would be especially appropriate now, before the parties and Special Master for claim construction 

invest significant time for the Markman hearing and subsequent report and recommendation of the 

Special Master. Furthermore, a stay in view of the IPRs would have less impact on this case than 

under ordinary circumstances because a significant enlargement of the schedule is already 

necessary to accommodate (1) the Special Master for claim construction (as addressed at the 

Court’s previous hearings), and (2) the pending discovery from the European Telecommunications 

Standards Institute sought through a letter of request pursuant to the Hague Convention. 

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II. BACKGROUND 

Plaintiffs are non-practicing entities that do not manufacture or commercialize any 

products. Their business is to try to monetize patents. Sisvel and its affiliates have filed nearly 50 

patent lawsuits in U.S. District Courts. 

HMD Global Oy owns the rights to make and sell mobile phones under the famous Nokia 

brand. HMD America distributes Nokia phones in the U.S. 

The present action is part of a large litigation campaign in which Sisvel has asserted many 

patents against many defendants in two groups of lawsuits referred to here as the “Sisvel 1” and 

“Sisvel 2” actions. The present lawsuit against HMD is one of the Sisvel 2 actions.1

The patents asserted in the Sisvel 1 and Sisvel 2 actions are of low technical merit and 

value. Sisvel’s patent portfolio includes many patents discarded by the original owners and 

acquired in bulk by Sisvel, like those asserted here. It is common practice for companies that 

develop large patent portfolios to sell off their less valuable patents over time. A major reason for 

this practice is that a patent owner must pay maintenance fees several times after a patent issues to 

keep it in force. Each maintenance fee is thousands of dollars per patent,2 and these fees can 

become onerous for companies that own many patents. As a result, companies with large patent 

portfolios often review their patents over time to identify patents that are valuable and warrant 

paying maintenance fees and, conversely, to identify patents that are not valuable enough to 

warrant paying maintenance fees. Companies often sell off such low value patents in bulk to patent 

aggregators like Sisvel. The Sisvel 1 and Sisvel 2 patents are examples of such low value patents. 

Beginning in June 2019, Sisvel selected a first group of 12 patents that were originally 

developed and owned by Nokia and Blackberry and filed a group of 11 lawsuits that comprise the 

Sisvel 1 cases. See Appendix 1. Sisvel contends that the Sisvel 1 patents are “essential” to various 

aspects of the 2G, 3G, and 4G telecommunications standards. According to Sisvel, complying 

 

1

 For the Court’s reference, Appendix 1 lists (a) the Sisvel 1 cases, (b) the IPRs for the Sisvel 1 

patents, (c) the Sisvel 2 cases, and (d) the IPRs for the Sisvel 2 patents. 

2

 The USPTO’s patent maintenance fee schedule is available at https://www.uspto.gov/learningand-resources/fees-and-payment/uspto-fee-schedule#Patent%20Maintenance%20Fee.

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with these standards requires practicing the claims of the Sisvel 1 patents. The 2G, 3G, and 4G 

standards are issued by the European Telecommunications Standards Institute (“ETSI”). 

Some of the Sisvel 1 defendants filed IPR petitions at the U.S. Patent and Trademark Office 

(“USPTO”) that challenge the validity of the patents. See Appendix 1. Recently, the USPTO 

instituted trial for IPRs for 11 of 12 of the patents asserted in the Sisvel 1 cases, finding “there is 

a reasonable likelihood that the petitioner[s] would prevail [on invalidity] with respect to at least 

1 of the claims challenged in the petition[s]” under 35 U.S.C. § 314. These IPRs challenge the 

validity of 65 of 66 of the asserted patent claims in the Sisvel 1 cases. 

Facing the prospect that the USPTO is likely to find 11 of 12 of the asserted patents in the 

Sisvel 1 cases to be invalid, Sisvel stipulated to a stay for six of the Sisvel 1 cases pending in 

Delaware and the Northern District of Texas. The defendants in the other Sisvel 1 cases have 

either settled or have agreed not to contest validity. 

In May 2020, Sisvel selected a second group of nine patents that were originally developed 

by Nokia, Blackberry, and LG Electronics and filed a group of 13 lawsuits that comprise the 

Sisvel 2 cases. See Appendix 1. The present lawsuit against HMD is one of the Sisvel 2 cases. 

Sisvel originally filed this action against HMD on May 15, 2020, but waited until July 9, 2020, 

before attempting to serve the complaint on HMD. ECF No. 6. HMD is not a party to any Sisvel 1 

case, but many of the defendants in the Sisvel 1 cases were also sued in the Sisvel 2 cases. 

The present action is the first of the Sisvel 2 cases to begin claim construction proceedings. 

No other court has considered the meaning of the disputed claim terms of the asserted patents in 

this case. 

The Sisvel 2 actions are large and complex because the nine asserted patents are unrelated 

to each other and concern different aspects of cellular communications technology. The nine 

asserted patents in the Sisvel 2 cases are listed below: 

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Asserted U.S. 

Patent Number Title Current & Original Assignee 

7,979,070

(“the ’070 patent”) 

Mobile equipment for sending an attach 

request to a network 

Sisvel Int’l S.A.

Nokia 

8,189,611 

(“the ’611 patent”) 

System and method for resolving 

contention among applications requiring 

data connections between a mobile 

communications device and a wireless 

network 

3G Licensing S.A. 

BlackBerry 

8,600,383 

(“the ’383 patent”) 

Apparatus and method for making 

measurements in mobile 

telecommunications system user 

equipment 

3G Licensing S.A. 

BlackBerry 

7,215,653

(“the ’653 patent”) 

Controlling data transmission rate on the 

reverse link for each mobile station in a 

dedicated manner 

3G Licensing S.A.

LG Electronics 

7,869,396

(“the ’396 patent”) 

Data transmission method and data retransmission method 

Sisvel S.p.A.

LG Electronics 

8,971,279

(“the ’279 patent”) 

Method and apparatus for indicating 

deactivation of semi-persistent 

scheduling 

Sisvel S.p.A.

LG Electronics 

7,319,718

(“the ’718 patent”) 

CQI coding method for HS-DPCCH 

3G Licensing S.A.

LG Electronics 

7,551,625

(“the ’625 patent”) 

Method of scheduling an uplink packet 

transmission channel in a mobile 

communication system 

3G Licensing S.A.

LG Electronics 

7,580,388 

(“the ’388 patent”) 

Method and apparatus for providing 

enhanced messages on common control 

channel in wireless communication 

system 

3G Licensing S.A. 

LG Electronics 

Sisvel asserts that the Sisvel 2 patents are essential to various aspects of the 3G and 4G 

telecommunications standards. HMD contends that the nine asserted patents are not infringed 

and/or are invalid. HMD further contends that, to the extent the asserted patents are essential, 

Sisvel and/or the original owners of the patents breached their promises to ETSI (the standards 

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setting organization) and their members to license the patents on Fair Reasonable and NonDiscriminatory (“FRAND”) terms.3

Some of the defendants in the Sisvel 2 cases filed IPR petitions against all nine asserted 

patents, including all 29 patent claims asserted against HMD. See Appendix 1. The first petition 

was filed on March 4, 2021, and the last petition was filed on June 17, 2021. See Appendix 1. 

Institution decisions by the USPTO are expected in September 2021 through November 2021. The 

USPTO must normally issue final written decisions within one year of the time the USPTO notices 

institution of IPRs. 35 U.S.C. § 316(a)(11). 

On June 21, 2021, in the Sisvel 2 case against ZTE, the Northern District of Texas denied 

without prejudice ZTE’s motion to stay its case prior to an institution decision in the IPRs, although 

that case has since been stayed for settlement discussions. Sisvel International SA v. ZTE (USA), 

Inc., No. 20-cv-1289 (N.D. Tex.), ECF Nos. 43, 47. 

More recently, on July 9, 2021, the District of Delaware stayed six pending Sisvel 2 cases 

in view of the substantial overlap between Sisvel’s patents and issues in both the Sisvel 1 and 2 

cases—before any institution decisions have been reached. See Sisvel International SA v. Dell 

Inc., No. 20-cv-649 (D. Del. July 9, 2021). The Delaware court stayed the Sisvel 2 cases against 

six defendants, including Xirgo and Verifone, which like HMD are not parties to the IPR 

proceedings, and TCL and Wiko, which like HMD are not parties to the Sisvel 1 cases. 

III. LEGAL STANDARDS 

“Courts generally enjoy broad discretion in deciding how best to manage the cases before 

it.” Targus Int’l LLC v. Group III Int’l, Inc., Civil Action No. 20-21435, 2021 WL 542675, at *1 

(S.D. Fla. Jan. 8, 2021) (citing Johnson v. Bd. of Regents of Univ. of Ga., 263 F. 3d 1234, 1269 

(11th Cir. 2001)). This principle soundly applies when a stay of litigation is sought pending an 

administrative proceeding to challenge the validity of a patent before the patent office. Id. (“[T]he 

 

3

 A patent holder’s commitment to license its patents on FRAND terms is the quid pro quo for 

adoption of the patent holder’s technology into the standard. Otherwise, patent holders could 

extract monopoly prices for technology mandated for standards-compliance. 

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decision to stay related civil patent infringement litigation is within the sound discretion of the 

district court.”) (citation omitted). 

“Courts recognize a ‘liberal policy in favor of granting stays pending reexamination of the 

validity of patent claims.’” Rothschild Storage Retrieval Innovations LLC v Motorola Mobility 

LLC, Civil Action No. 14-22659, 2015 WL 12715618, at *1 (S.D. Fla. May 11, 2015) (citation 

omitted). “Stays pending IPR are routinely granted ‘in order to avoid inconsistent results, obtain 

guidance from the PTAB, or avoid needless waste of judicial resources.’” Id. (citation omitted). 

In determining whether a stay pending IPR is appropriate, Courts consider “(1) whether 

the stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; 

(2) whether the stay will simplify issues in question and trial of the case; and (3) whether discovery 

is complete and whether a trial date has been set.” Targus, 2021 WL 542675, at *2. Courts also 

“consider whether the totality of the circumstances and the interests of justice favor a stay.” Prisua 

Eng’g Corp. v. Samsung Elecs. Co., 472 F. Supp. 3d 1183, 1186 (S.D. Fla. 2020). 

IV. ARGUMENT 

In this case, all three factors that the Court should consider and the totality of circumstances 

favor a stay. 

A. Sisvel Is A Non-Practicing Entity That Would Not Be Unduly Prejudiced 

By A Stay Or Be Placed At A Clear Tactical Disadvantage 

A stay would not unduly prejudice or present a clear tactical disadvantage to Sisvel. Sisvel 

is a non-practicing entity. A stay will not unduly prejudice Sisvel because it does not sell products, 

use the technology in its patents, or compete with HMD. Intell. Ventures I, LLC v. Motorola 

Mobility LLC, Case No. 1-61358-CIV, 2014 WL 12584301, at *2 (S.D. Fla. July 17, 2014) (“[T]he 

stay will not unduly prejudice Plaintiffs, who are non-practicing entities not seeking an 

injunction.”); see also Prisua Eng’g Corp., 472 F. Supp. 3d at 1186 (“[A] stay is unlikely to 

materially prejudice Plaintiff because Plaintiff and Defendants are not direct competitors ....”). 

Sisvel is not seeking an injunction (see Complaint), so this is not a case where a competitor faces 

prejudice because it is forced to compete with a potential infringer during the period of stay. Cf. 

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Targus, 2021 WL 542675, at *2 (acknowledging that “courts often recognize” that direct 

competitors face prejudice during the period of stay.) The same remedies that are available to 

Sisvel now will also be available to Sisvel after a stay, including monetary damages and prejudgment interest. Rothschild, 2015 WL 12715618, at *2 (holding first factor favored stay because 

plaintiff “will have the same remedies available to it that it does now—namely monetary damages 

and pre-judgment interest for the action’s pendency.”); see also Targus, 2021 WL 542675, at *2 

(“Targus has not sought a preliminary injunction and, thus, any further harm occasioned by the 

stay may be ameliorated by monetary damages.”) 

Sisvel cannot show that it will be unduly prejudiced or suffer tactical disadvantage because 

a “delay in the litigation does not establish undue prejudice.” Prisua Eng’g Corp., 472 F. Supp. 

3d at 1186; Targus, 2021 WL 542675, at *2 (“[S]tanding alone, the potential for litigation delay 

does not establish undue prejudice.”) (citation omitted). Sisvel should not be heard to complain 

about delay because it waited a significant time after acquiring some of the asserted patents before 

asserting them against HMD. Sisvel acquired the asserted patent formerly owned by Nokia in 

April 2012—eight years before suing HMD in May 2020. Sisvel acquired the two asserted patents 

formerly owned by Blackberry in April 2019—one year before suing HMD. Sisvel acquired the 

six asserted patents formerly owned by LG Electronics in September 2019 and February 2020. 

ECF No. 1 at ¶¶ 26, 27. After filing the complaint in this action, Sisvel waited another two months 

before serving HMD. 

Any delay to this litigation from a stay in view of the IPRs would extend through the oneyear period in which the IPR trials will occur and the USPTO will issue its final written decisions 

(plus possible appellate review). Such limited delay is outweighed by the many benefits offered 

by the cost-effective and efficient patent office IPR procedure. In Targus, Judge Scola stayed a 

patent lawsuit, finding that the delay due to a stay pending IPR is outweighed by the potential 

advantages of the IPR: 

The Court finds, in this case, such a delay is outweighed by the 

many recognized potential advantages of inter partes review: 

“(1) furthering judicial economy; (2) determining validity; 

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(3) focusing the issues, defenses, and evidence; (4) developing the 

prior art and prosecution history; (5) obtaining the PTO’s 

particular expertise; (6) encouraging settlement; and (7) reducing 

costs to the parties.” 

2021 WL 542675, at *2 (citation omitted). 

B. A Stay Would Significantly Simplify The Issues 

A stay would significantly simplify the issues in question and trial in this case because the 

IPRs for the Sisvel 2 patents are likely to invalidate all or most of the asserted patents. The 

circumstances show that the USPTO is likely to institute IPR trials and find that all or nearly all 

of the Sisvel 2 patents are invalid. Even if only some IPR trials are instituted, this Court will 

benefit from the focused and skilled analysis that the USPTO would provide concerning the 

patents, claims, and prior art. 

1. The IPRs Will Likely Invalidate All Or Most Of The Asserted Patents 

The USPTO instituted trial for 11 of 12 Sisvel 1 patents, finding a reasonable likelihood 

that at least one claim of those 11 patents is invalid. Sixty five of 66 patent claims asserted by 

Sisvel are now subject to invalidation by the very office that granted them. The fact that the 

USPTO instituted IPR trials for 65 of 66 of Sisvel’s asserted patent claims is reflective of the low 

technical merit and value of Sisvel’s patents. All or the vast majority of these claims are likely to 

be invalidated. The USPTO statistics for fiscal years 2019 and 2020, following institution, 

70 percent and 73 percent, respectively, of challenged claims that were addressed in a final written 

decision were found invalid. Declaration of Gene Lee (“Lee Declaration”) Exhibit 1 at 23,4

 

4

 Exhibit 1 is the Appendix for the USPTO Patent Trial and Appeal Board’s (PTAB’s) trial 

statistics for fiscal year 2020. Slide 23 shows PTAB trial outcomes for fiscal year 2019. 20,247 

patent claims were challenged in petitions (nearly all IPRs), of which 11,038 were instituted for 

trial. Of the claims for which trial was instituted, 7,185 were the subject of a final written decision, 

of which 5,045 were found to be unpatentable (i.e., invalid)—an invalidation rate of 70 percent. 

Of claims for which trial was instituted, 3,350 were not subject to a final written decision, mostly 

because the trial settlement (3,350 claims were “No FWD” in slide 23). 

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Exhibit 2 at 15.5 Sisvel apparently expects that all or nearly all of the Sisvel 1 patents will be 

invalidated because Sisvel stipulated to a stay of the Sisvel 1 cases. 

The Sisvel 2 patents are similarly of low value and technical merit, and the IPRs will likely 

invalidate all or nearly all of the Sisvel 2 patents. The Sisvel 1 and Sisvel 2 patents all relate to 

cellular communications technology, and Sisvel asserts that they are essential to the 3G and 4G 

communications standards. Like the Sisvel 1 patents, the Sisvel 2 patents were discarded by their 

original owners and acquired in bulk by Sisvel. In fact, three of the Sisvel 2 patents were acquired 

from Nokia and Blackberry as part of the same portfolios in which Sisvel acquired the Sisvel 1 

patents, and the USPTO’s subsequent treatment of those portfolios is instructive. IPR trials have 

been already instituted on four of the patents in the Nokia portfolio by which Sisvel acquired the 

’070 Patent, and on seven of the patents in the Blackberry portfolio by which Sisvel acquired the 

’611 and ’383 patents. 

2. The IPRs Will Likely Significantly Simplify The Issues And Reduce 

The Scope Of This Case 

If the IPRs invalidate all of the Sisvel 2 patents, this case would end. Rothschild, 2015 WL 

12715618, at *1 (“[T]his case may become moot if the Patent Board invalidates the asserted 

claims.”); Intell. Ventures I, 2014 WL 12584301, at *2 (“[I]f the parties continue to litigate validity 

issues before this Court, and the PTO subsequently finds that some or all of the claim at issue here 

are invalid, much time and resource will have been wasted by the Court and the Parties.”) Even if 

the IPRs invalidate fewer than all patents or claims, they would significantly simplify the issues 

and reduce the scope of this case for discovery and trial. Rothschild, 2015 WL 12715618, at *2 

(“Even if only some of the claims are canceled by the PTAB, those claims will not need to be 

 

5

 Exhibit 2 is the USPTO PTAB’s trial statistics for fiscal year 2020. Slides 15-16 shows PTAB 

trial outcomes for fiscal year 2020 in a different format than slide 23 of Exhibit 1. 18,019 patent 

claims were challenged in petitions (nearly all IPRs), of which 9,663 were instituted for trial. Of 

the claims for which trial was instituted, 6,977 (1,852 + 5,125) were the subject of a final written 

decision, of which 5,125 were found to be unpatentable (i.e., invalid)—an invalidation rate of 

73 percent. Of claims for which trial was instituted, 3,350 were not subject to a final written 

decision, mostly because the trial settlement (2,136 claims were “No FWD” in slide 16). 

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addressed in this action, and thus save the Parties from spending time conducting discovery, 

researching, and briefing the issues.”); Targus, 2021 WL 542675, at *2 (holding second factor 

favored stay where “any streamlining of the issues or invalidated issues will save judicial 

resources.”). 

This is a large and complex patent litigation involving nine asserted patents and 29 asserted 

claims that will require litigation of a wide range of facts and issues concerning claim construction, 

noninfringement, and invalidity. For example, each asserted patent involves a distinct set of prior 

art that is different from the prior art for the other patents. Even if just a few asserted patents are 

invalidated by the IPRs, this case will be simplified because claim construction, fact discovery, 

and expert discovery would be mooted for each patent that is invalidated. 

A stay would also simplify the issues because the IPRs “will become part of the intrinsic 

record of the [] patents at issue.” Intell. Ventures I, 2014 WL 12584301, at *2. Sisvel will likely 

take positions in the IPRs that will inform this Court’s analyses—as it has already done. As one 

clear example, in its pre-institution filings, Sisvel requested that the USPTO construe the term 

“Enhanced Absolute Grant Channel” in order to avoid prior art; while Sisvel did not request any 

construction of that term before this Court, Sisvel’s statement is now a part of the patent’s intrinsic 

record, and may necessitate consideration by this Court. Lee Declaration Ex. 3 (’625 patent owner 

response). A stay pending IPR would allow Sisvel’s positions regarding the scope of its patents 

to become clear and allow the USPTO to consider those statements on their merits. Most 

importantly, it would allow HMD to exercise its right to defend itself in view of all of Sisvel’s 

statements about its patents, not only those it makes to this Court.6

 

6

 A party who requests an IPR that results in a final written decision from the USPTO is estopped 

from raising invalidity defenses that were “raised or reasonably could have [been] raised during 

that inter partes review.” 35 U.S.C. § 315(e)(2). HMD is not a party to the IPR proceedings 

against Sisvel’s patents so this estoppel does not apply to HMD. Even so, the IPR proceedings 

will significantly narrow the issues before this Court. Further, were the Court to conclude that it 

would benefit the Court for HMD to be estopped as though it were a party to the IPR proceedings, 

HMD would consent to that estoppel in the interest of staying the case. 

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C. This Case Is At An Early Stage, And A Stay Would Be Appropriate At This 

Time 

The third factor also favors stay because the case is in its early stages. There have been no 

fact depositions, no substantive claim construction hearing or rulings, no expert reports or 

depositions (other than for claim construction), and no dispositive motions. Intell. Ventures I, 

LLC, 2014 WL 12584301, at *2 (case in its early stages where the “Court has not yet held claim 

construction hearing” and “[f]act discovery has not yet completed, expert discovery has not yet 

commenced, and dispositive motions have not yet been filed.”); Rothschild, 2015 WL 12715618, 

at *2 (same). Judge Noreika identified the similar posture of the Delaware Sisvel 2 cases as 

supportive of her decision to stay those cases. 

Courts have found that a stay is appropriate even as to cases farther along than this one. 

Prisua Eng’g Corp., 472 F. Supp. 3d at 1186 (finding factor weighed “slightly in favor of ... the 

stay” despite jury verdict finding claims valid because of the risk of inconsistent ruling from the 

USPTO). For example, in Prisua, the Court found this factor weighed in favor of stay after a jury 

verdict found the patents valid. A stay would avoid inconsistent results between this Court’s 

rulings of invalidity at the summary judgment stage or a jury verdict of invalidity and the USPTO’s 

decision. Id.

Here, not only is the case in its early stages, but a significant modification to the schedule 

is already necessary for several reasons. Therefore, a stay would have less impact on this case 

than if a significant modification to the schedule were not necessary. 

First, by agreement of the parties, claim construction will be referred to a Special Master. 

The parties have identified proposed candidates, and the Court is expected to appoint a Special 

Mater this week, by July 22, 2021. Following appointment, the Special Master will need time to 

study the existing record, hold an oral argument, and issue a report and recommendation. The 

parties previously raised with the Court the need to modify the schedule accordingly. 

Staying the case now is especially appropriate—before the Special Master and the parties 

devote significant time and effort to the remaining claim construction activities, including the 

Special Master’s report and recommendation and possible subsequent motion practice. Such work 

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could be rendered moot if the asserted patents are invalidated by the IPRs. Furthermore, a stay 

would allow the Special Master the benefit of the USPTO’s specialized insight into the claim terms 

and scope from the IPRs. 

Second, this case will involve significant foreign discovery, including document and 

depositions, because the parties themselves and many third parties with relevant information are 

foreign. In April 2021, HMD moved for foreign discovery from ETSI pursuant to the Hague 

Convention. ECF No. 83. On May 21, 2021, the French Ministry of Justice authorized the request 

but forwarded the matter to the provincial court, the First Instance Court of Grasse, for execution. 

ECF No. 100. Discovery from ETSI is critical because Sisvel’s infringement theories are based 

on the contention that the asserted patents are essential to the 3G and 4G standards and because 

prior art that invalidates some patents comes from ETSI. Discovery from ETSI is necessary at 

least: (1) to show how the standards alleged to be infringed in this case were developed; (2) to 

determine whether there are any patent rights associated with those standards and the FRAND 

obligations associated with such patent rights; (3) to determine whether ETSI has relevant prior 

art of which HMD is not currently aware; (4) to authenticate and establish the public availability 

of prior art that HMD has already discovered in this case. Furthermore, discovery might be 

necessary from Nokia, Blackberry, and LG Electronics, the companies that originally developed 

and owned the asserted patents. Sisvel’s initial disclosures further identify 22 foreign third-party 

individuals with knowledge concerning the origins of the purported inventions, the prosecution of 

the patents before the USPTO, and prior art. Lee Declaration Ex. 4. 

D. The Totality Of Circumstances Favors A Stay 

Although “courts often deny stays when they are sought before the PTAB [USPTO] has 

decided to institute review, this is not [a] bright-line rule.” Targus, 2021 WL 542675, at *1 

(staying one-patent case prior to institution decision). In Targus, after considering each of the 

relevant factors Judge Scola stayed the case prior to the USPTO’s institution decision. However, 

that case involved only one patent. This case presents even greater benefit to staying prior to 

institution because there is more likelihood that at least some of the petitions will be instituted. In 

Case 1:20-cv-22051-DPG Document 107 Entered on FLSD Docket 07/20/2021 Page 15 of 19
13 

the Sisvel 1 cases, the patent offices instituted review of 65 of 66 challenged claims. Here, the 

patent office is likely to institute review of many challenged claims given the similarities to the 

patents in the Sisvel 1 cases. 

The optimal time to stay the case is now. Institution decisions are not expected until 

September at the earliest and the final institution decision is not expected until November. If the 

Court were to wait for institution decisions in the IPRs before staying this case, a significant 

portion of the benefits of the stay will be missed. The Special Master would carry out claim 

construction activities on patents that are likely to be found invalid. The parties will spend time 

and resources conducting fact discovery (including foreign discovery) and expert discovery on 

issues that may be mooted by the IPR proceedings. 

In sum, the parties and the Court should not be forced to waste more resources litigating 

patents that the patent office may find invalid. Congress itself envisioned that IPR proceedings 

would serve as a cost-effective and efficient method to weed out invalid patents like the ones Sisvel 

asserts here. IPR proceedings are an alternative to more costly district court litigation that can 

greatly simplify the issues and cull large patent litigations such as this one. 

Case 1:20-cv-22051-DPG Document 107 Entered on FLSD Docket 07/20/2021 Page 16 of 19
14 

V. CONCLUSION 

For all of the above reasons, the Court should stay the litigation pending IPR proceedings 

challenging the validity of every asserted patent in this case. 

VI. LOCAL RULE 7.1 CERTIFICATION 

Counsel for HMD has conferred with counsel for Sisvel about the relief sought in this 

Motion in a good faith effort to resolve the issues raised in the Motion and has been unable to do 

so. 

Case 1:20-cv-22051-DPG Document 107 Entered on FLSD Docket 07/20/2021 Page 17 of 19
15 

Dated: July 20, 2021 

WILLIAM J. MCCABE, ESQ. 

Pro hac vice 

wmccabe@perkinscoie.com 

GENE W. LEE, ESQ. 

Pro hac vice 

glee@perkinscoie.com 

MATTHEW J. MOFFA, ESQ. 

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 

SHYAMKRISHNA PALAIYANUR, ESQ. 

Pro hac vice

spalaiyanur@perkinscoie.com 

PERKINS COIE LLP

500 W. 2nd St. 

Suite 1900 

Austin, TX 78701 

Telephone: (737) 256-6100 

Facsimile: (737) 256-6300 

MICHAEL A. CHAJON, ESQ. 

Pro hac vice 

mchajon@perkinscoie.com 

PERKINS COIE LLP 

700 Thirteenth Street N.W., Suite 800 

Washington, D.C. 20005 

Telephone: (202) 654-3316 

Facsimile: (202) 624-9575 

ADAM G. HESTER, ESQ. 

Pro hac vice 

ahester@perkinscoie.com 

PERKINS COIE LLP 

3150 Porter Drive 

Palo Alto, CA 94304-1212 

Telephone: (650) 838-4311 

Facsimile: (650) 838-4350

Respectfully submitted, 

/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

Case 1:20-cv-22051-DPG Document 107 Entered on FLSD Docket 07/20/2021 Page 18 of 19
16 

ATTORNEYS FOR DEFENDANTS 

HMD AMERICA, INC., AND 

HMD GLOBAL OY

CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 20th day of July, 2021, I electronically filed the 

foregoing with the Clerk of Court by using the CM/ECF system which served a copy on the 

following: 

Francesca Russo-Di Staulo, Esq. 

Robert Ralph Jimenez, Esq. 

Jorge Tadeo Espinosa, Esq. 

GrayRobinson, P.A. 

333 S.E. 2nd Avenue, Suite 3200 

Miami, FL 33131 

Telephone: 305-416-6880 

Fax: 305-416-6887 

Email: francesca.russo@gray-robinson.com 

Email: robert.jimenez@gray-robinson.com

Email: jorge.espinosa@gray-robinson.com 

Neil Benchell, Esq. 

Pro hac vice

Stephanie Berger, Esq. 

Pro hac vice 

Timothy Devlin 

Pro hac vice 

Devlin Law Firm, LLC 

1526 Gilpin Avenue 

Wilmington, DE 19806 

Telephone: (302) 449-9010 

Email: nbenchell@devlinlawfirm.com 

Email: sberger@devlinlawfirm.com 

Email: tdevlin@devlinlawfirm.com

Email: dlflitparas@devlinlawfirm.com 

Attorneys for Plaintiffs, Sisvel International S.A., 3g Licensing S.A., and Sisvel S.p.A. 

By: /s/ Joseph W. Bain

Joseph W. Bain 

Florida Bar No. 860360 

jbain@shutts.com

Case 1:20-cv-22051-DPG Document 107 Entered on FLSD Docket 07/20/2021 Page 19 of 19