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.’S AND HMD GLOBAL OY’S 

REPLY MEMORANDUM IN SUPPORT OF DEFENDANTS’ MOTION TO STAY 

LITIGATION PENDING INTER PARTES REVIEW 

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TABLE OF CONTENTS 

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

II. ARGUMENT ....................................................................................................................... 1

A. A Pre-Institution Stay Is Appropriate In This Case, And HMD’s Motion Is Timely ..... 1

B. HMD’s Case Law Is Informative, And Third-Parties To IPRs Are Not Precluded From 

Moving To Stay Under Appropriate Circumstances ....................................................... 2

C. A Stay Would Not Prejudice Sisvel ................................................................................. 3

D. A Stay Would Simplify The Issues .................................................................................. 5

E. Discovery Is At An Early Stage, Making A Stay Appropriate At This Time .................. 5

III. CONCLUSION .................................................................................................................... 6

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TABLE OF AUTHORITIES 

Page 

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CASES

Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., 

No. 12-cv-1727, 2013 U.S. Dist. LEXIS 67790 (M.D. Fla. May 13, 2013)..............................3

DataQuill Ltd. v. BLU Products, Inc., 

No. 20-20760-CIV, 2020 U.S. Dist. LEXIS 197835 (S.D. Fla. Apr. 10, 2020) ........................4

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

Case No. 1-61358-CIV, 2014 WL 12584301 (S.D. Fla. July 17, 2014)....................................3

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

472 F. Supp. 3d 1183 (S.D. Fla. 2020) ......................................................................................1

Rothschild Storage Retrieval Innovations LLC v Motorola Mobility LLC, 

Civil Action No. 14-22659, 2015 WL 12715618 (S.D. Fla. May 11, 2015) .............................3

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

Civil Action No. 20-21435, 2021 WL 542675 (S.D. Fla. Jan. 8, 2021) ............................1, 2, 3

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I. INTRODUCTION 

Defendants HMD America, Inc., and HMD Global Oy (“HMD”) moved to stay this action 

in view of nine inter partes review (“IPR”) petitions challenging the validity of all the asserted 

patents in this case. Those IPR petitions may result in final written decisions from the U.S. Patent 

and Trademark Office that greatly simplify the issues in this case, which involves nine asserted 

patents and 66 asserted patent claims. Plaintiffs Sisvel International S.A., 3G Licensing S.A., and 

Sisvel S.p.A. (“Sisvel”) oppose the motion but raise issues that do not justify moving forward. 

Sisvel’s arguments do not bear on the three factors courts consider when deciding whether to stay 

a case pending IPRs. Sisvel ignores the fact that this District Court has issued pre-institution stays 

under appropriate circumstances. Sisvel’s arguments concerning the stay factors also fall short—

Sisvel will suffer no cognizable prejudice from a stay because it does not practice the patents and 

any supposed injury is redressable through monetary damages; the issues are likely to be 

significantly simplified by a stay; and the case has not progressed far with discovery still in early 

phases. For these reasons and those explained in HMD’s opening motion and memorandum of 

law (ECF No. 107; “Motion”), a stay pending IPR is warranted. 

II. ARGUMENT 

A. A Pre-Institution Stay Is Appropriate In This Case, 

And HMD’s Motion Is Timely 

Sisvel argues that HMD’s motion is premature because the IPRs have not yet been 

instituted. See Plaintiffs’ Memorandum of Law in Opposition to Defendants’ Motion to Stay, ECF 

No. 111 (“Opposition”) at 7. However, a pre-institution stay is appropriate if the factors 

concerning whether a stay should be entered favor a stay. To that end, courts consider the three 

stay factors under the totality of the circumstances when deciding whether to issue a stay. See 

Prisua Eng’g Corp. v. Samsung Elecs. Co., 472 F. Supp. 3d 1183, 1185‒86 (S.D. Fla. 2020). This

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Court has both granted and denied pre-institution stays, depending on the circumstances. See 

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). The circumstances in this case warrant a pre-institution stay. The Sisvel 1 

patents are of low value and technical merit, as reflected by the fact that 11 of 12 of the IPRs for 

the Sisvel 1 patents were instituted for trial. The nine patents asserted in this case are similarly of 

low value and technical merit and are likely to be instituted for trial and invalidated. Motion at 2–

3, 8‒9. 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. Id. at 2–4. 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. Id. at 8‒9. 

B. HMD’s Case Law Is Informative, And Third-Parties To IPRs Are Not 

Precluded From Moving To Stay Under Appropriate Circumstances 

Sisvel attempts to distinguish the case law that supports HMD’s position by arguing that 

they all involved situations where the party seeking a stay was an IPR petitioner or a real party in 

interest to an IPR petitioner (Opposition at 13‒14), but that is no distinction at all. The factors that

are relevant to the Court’s consideration of a stay all favor a stay regardless of whether HMD is or 

is not itself a party of the IPRs in question. Those factors are: “(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. None of these factors turns on whether 

the movant is a party or real party in interest to the IPR. 

Indeed, the Delaware court that presides over and stayed the Sisvel 1 and 2 actions saw no 

distinction between the defendants who were parties to the IPRs and the parties who were not. In 

the Sisvel 2 cases, the Delaware court stayed the cases against six defendants, including Xirgo 

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Technologies (No. 1-20-cv-00659 (D. Del.)) and VeriFone (No. 1-20-cv-00656 (D. Del.)), which 

like HMD are not parties to the IPR proceedings. 

Sisvel focuses on certain differences between this case and the Sisvel 2 cases in Delaware, 

such as the fact that HMD is not a party to the Sisvel 1 cases that preceded the Delaware Sisvel 2 

cases. That difference also did not matter to the court that Delaware court, which stayed the cases 

for all Sisvel 2 defendants in Delaware, including TCL Communication Technology Holdings 

Limited (No. 1-20-cv-00654 (D. Del.)) and Wiko SAS (No. 1-20-cv-00658 (D. Del.)), which like 

HMD are not parties to the Sisvel 1 cases. 

The differences between HMD and some of the defendants in Delaware do not detract from 

the appropriateness of a stay in this case. Sisvel ignores the sound policy goal of avoiding 

inconsistent results from parallel proceedings regarding the same patents. See 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) (“Stays pending IPR are granted routinely ‘in order to 

avoid inconsistent results, obtain guidance from the PTAB, or avoid needless waste of judicial 

resources.’”) (citation omitted). If a stay is denied here, this will be the only court action for the 

asserted patents that will proceed in parallel with the nine pertinent IPRs. At bottom, nothing in 

Sisvel’s Opposition changes the analysis of the relevant factors, which as explained below and in 

HMD’s Motion, strongly favor a stay of this case. 

C. A Stay Would Not Prejudice Sisvel 

Sisvel asserts that it would be unduly prejudiced by a stay, but Sisvel points only to the 

delay of litigation and general policy considerations about patent enforcement. Opposition at 11. 

These considerations do not present a substantial risk of prejudice for a non-practicing entity like 

Sisvel. Because damages and pre-judgment interest could make it whole, delay attributable to a 

stay does not prejudice a non-practicing entity. See, e.g., Intell. Ventures I, LLC v. Motorola 

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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.”); Targus, 2021 WL 542675, at *2 (“[S]tanding alone, the potential for litigation delay 

does not establish undue prejudice.”) (citation omitted). The case cited by Sisvel for general policy 

considerations is inapposite because it involved two parties that were competitors in the 

marketplace, and the plaintiff was a manufacturer of the relevant products. Automatic Mfg. Sys., 

Inc. v. Primera Tech., Inc., No. 12-cv-1727, 2013 U.S. Dist. LEXIS 67790, at *1–2 (M.D. Fla. 

May 13, 2013). 

Sisvel also contends that HMD seeks a tactical advantage with this motion, noting that 

HMD is not a party to the IPRs and would not be subject to statutory estoppel. But Sisvel fails to 

mention that HMD has offered to consent to estoppel if the Court were to conclude that it would 

benefit the case. Motion at 10 n.6. Sisvel seeks to support its disingenuous argument by citing 

DataQuill Ltd. v. BLU Products, Inc., No. 20-20760-CIV, 2020 U.S. Dist. LEXIS 197835 (S.D. 

Fla. Apr. 10, 2020). But DataQuill is distinguishable because it involved a situation where the 

defendant seeking a stay had a history in prior actions of seeking stays based on IPRs filed by 

others, which led the court to conclude that its request for a stay was a litigation tactic. DataQuill, 

2020 U.S. Dist. LEXIS 197835 at *4–5 (“BLU is clearly aware of the litigation tactic involving 

stays of litigation pending against it on the basis of inter partes review and has benefitted from it 

before.”). The court denied a stay on that basis. Id. at *6–7 (“Most importantly, however, the 

undersigned is troubled by what it considers a litigation tactic by BLU to seek stays of patent 

litigation on the basis of inter partes review, as evidenced by its successful use of that tactic in 

Blackberry Limited.”). No such history exists for HMD. 

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D. A Stay Would Simplify The Issues 

The IPRs are likely to simplify this case significantly. The IPRs from the Sisvel 1 patents 

are informative about the likelihood of institution for the IPR petitions relating to the Sisvel 2 

cases. Eleven of the 12 IPRs for the Sisvel 1 patents were instituted for trial. See ECF No. 107-1. 

Sisvel argues that the USPTO statistics show that about 70 percent of challenged claims are found 

not unpatentable (Opposition at 12), but that statistic includes petitions that were not instituted. 

The IPRs for 11 or 12 of the Sisvel 1 patents are already past the institution stage. USPTO statistics 

illustrate the likelihood of an unpatentability finding once an IPR is instituted for trial. In 2019 

and 2020, of the challenged claims for which an IPR was instituted and a final written decision 

issued, 70 percent (2019) and 73 percent (2020) of the claims subject to final written decision were 

invalidated. ECF No. 107-3 (Lee Declaration Exhibit 1) at 23, ECF No. 107-4 (Lee Declaration 

Exhibit 2) at 15. For claims that were instituted for trial but not included in a final written decision, 

most of those claims are the subject of settlement, and settlements typically occur after institution 

because the patent owner chooses to settle instead of facing the risk of invalidation in the IPR trial. 

The IPRs for the Sisvel 2 patents are likely to yield similar results. Three of the asserted 

Sisvel 2 patents were acquired from Nokia and Blackberry as part of the same portfolios in which 

Sisvel acquired the Sisvel 1 patents. For the reasons explained above, the USPTO’s institution of 

trial for eleven of twelve Sisvel 1 patents is instructive about the low value and technical merit of 

the Sisvel 2 patents as well. Motion at 2–3, 8‒9. 

E. Discovery Is At An Early Stage, Making A Stay Appropriate At This Time 

Discovery in this case is at an early stage. Sisvel claims the contrary, asserting that the 

case is “at an advanced stage” (Opposition at 4), and noting that significant document production 

has occurred (id. at 12). But Sisvel acknowledges that no depositions have taken place, 

contradicting its argument about the supposed advanced stage of litigation. Id. Furthermore, a 

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Special Master has been appointed for claim construction, and the Scheduling Order will need to 

be amended given the claim construction schedule. Under the Special Master’s proposed schedule, 

a report and recommendation will not issue until approximately November 21, 2021, after which 

additional time will be necessary for the parties to make any objections and for the Court to issue 

its final claim construction order. 

As explained in HMD’s opening brief (Motion at 12), the schedule might also require 

modification given the progress of critical foreign discovery from ETSI. Sisvel incorrectly asserts 

that it “primarily concerns the essentiality of the Asserted Patents to 3G and 4G standards.” 

Opposition at 13. In fact, the discovery from ETSI is critical for other reasons, including that ETSI 

is the source of some of the most important prior art that invalidates the asserted patents. 

III. CONCLUSION 

For the reasons set forth above and those in HMD’s Motion, HMD respectfully requests 

that the Court stay this action in view of the IPR proceedings challenging the validity of every 

asserted patent in this case. 

Case 1:20-cv-22051-DPG Document 113 Entered on FLSD Docket 08/10/2021 Page 9 of 11
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Dated: August 10, 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 

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 

ATTORNEYS FOR DEFENDANTS 

HMD AMERICA, INC., AND 

HMD GLOBAL OY

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 113 Entered on FLSD Docket 08/10/2021 Page 10 of 11
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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 10th day of August, 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

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