1

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

Civil Action No. 1:20-cv-22051-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.

JURY TRIAL DEMANDED 

PLAINTIFFS’ MEMORANDUM OF LAW IN OPPOSITION TO DEFENDANTS’ 

MOTION TO STAY

Dated: August 3, 2021

Timothy Devlin (Pro hac vice) 

tdevlin@devlinlawfirm.com 

Neil Benchell, Esq. (Pro hac vice) 

nbenchell@devlinlawfirm.com 

Stephanie Berger, Esq. (Pro hac vice) 

Sberger@devlinlawfirm.com 

DEVLIN LAW FIRM LLC

1526 Gilpin Avenue 

Wilmington, Delaware 19806

Telephone: (302) 449-9010

Facsimile: (302) 353-4251

Jorge Espinosa, Esq.

Florida Bar No: 779032

jorge.espinosa@gray-robinson.com

Francesca Russo, Esq.

francesca.russo@gray-robinson.com

Robert R. Jimenez, Esq.

robert.jimenez@gray-robinson.com

GRAY | ROBINSON, P.A.

333 S.E. 2nd Ave., Suite 300

Miami, FL 33131

Tel: 305-416-6880

Fax: 305-416-6887

Attorneys for Plaintiffs

Sisvel International S.A.,

3G Licensing S.A., and Sisvel S.p.A.

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TABLE OF CONTENTS

I. INTRODUCTION....................................................................................................................3

II. BACKGROUND..................................................................................................................5

III. LEGAL STANDARDS ........................................................................................................6

IV. ARGUMENT........................................................................................................................7

A. HMD’s Motion Is Premature................................................................................................7

B. HMD’s Motion Seeks a Tactical Advantage Over Sisvel ....................................................9

C. HMD’s Motion Unduly Prejudices Sisvel..........................................................................11

D. The Status of the Case Disfavors a Stay.............................................................................12

E. Staying the Case Will Not Simplify the Issues...................................................................12

F. HMD Cannot Support Its Position with Relevant Caselaw................................................13

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

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TABLE OF AUTHORITIES

Cases

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

2013 U.S. Dist. LEXIS 67790 (M.D. Fla. May 13, 2013).....................................................7, 11

Benefit Funding Sys. LLC v. Advance Am. Cash Advance Ctrs. Inc., 

767 F.3d 1383 (Fed. Cir. 2014)....................................................................................................6

DataQuill Ltd. v. Blu Prods., 

2020 U.S. Dist. LEXIS 197835 (S.D. Fla. Apr. 10, 2020) .................................................passim

Ethicon, Inc. v. Quigg, 

849 F.2d 1422 (Fed. Cir. 1988)....................................................................................................6

Intellectual Ventures I, LLC v. Motorola Mobility LLC, 

2014 U.S. Dist. LEXIS 190674 (S.D. Fla. July 17, 2014)...................................................13, 14

Intellectual Ventures II LLC v. Kemper Corp.,

2016 U.S. Dist. LEXIS 181431 (E.D. Tex. Nov. 7, 2016) ........................................................10

Landis v. N. Am. Co., 

299 U.S. 248 (1936).....................................................................................................................6

Payrange, Inc. v. Kiosoft Techs., LLC, 

2020 U.S. Dist. LEXIS 252940 (S.D. Fla. Nov. 23, 2020)..........................................................7

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

472 F. Supp. 3d 1183 (S.D. Fla. 2020) ......................................................................................14

Rothschild Storage Retrieval Innovations, LLC v. Motorola Mobility LLC, 

2021 U.S. Dist. LEXIS 3297 (S.D. Fla. May 11, 2015) ......................................................13, 14

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

2021 U.S. Dist. LEXIS 3297 (S.D. Fla. Jan. 8, 2021) .........................................................13, 14

Statutes

35 U.S.C. § 315(e).................................................................................................................4, 9, 10

Rules

Fed. R. Civ. P. 1.............................................................................................................................11

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Plaintiffs Sisvel International S.A., 3G Licensing S.A., and Sisvel S.p.A., 

(collectively “Sisvel”), pursuant to Local Rule 7.1, oppose Defendants HMD America, Inc. 

and HMD Global Oy’s (collectively “HMD”) Motion to Stay Litigation Pending Inter 

Partes Review (ECF No. 107). For the reasons set forth below, Sisvel respectfully asks that 

the Court deny the Motion to Stay. 

I. INTRODUCTION

HMD’s Motion is based on inter partes review (“IPR”) petitions that are in the early 

stages of being adjudicated, and that were not even filed by HMD. Currently, the Patent Trial 

and Appeals Board (“PTAB” or “Board”) has not instituted any of the IPRs. In fact, Sisvel has

not yet filed a preliminary response to all of the petitions. As a result, the PTAB will not issue

its first of nine institution decisions for at least another month with the last decision not coming 

until the end of the year. 

HMD had nothing to do with those petitions but is simply riding on the coattails of 

others’ hard work. But unlike the parties who did the work and spent the resources to file the 

petitions, HMD does not believe it should be estopped from asserting the invalidity arguments as 

put forward in the IPR proceedings.

HMD’s new litigation strategy appears to be delaying adjudication on the merits as long 

as possible. This is evident from the many discovery motions it has brought to the Court (ECF 

Nos. 39, 62, 73), its failed motion for sanctions (ECF No. 95), this Motion to Stay, and even its 

recently disclosed plan to “ask the Court to adjourn all existing future deadlines in the 

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Scheduling Order and to hold a scheduling conference after the Court issues the final claim

construction order.” (See Ex. 1.)

1 

HMD’s Motion should be denied, at least because it is premature. The Motion seeks a 

tactical advantage over Sisvel by relying on IPRs HMD did not prepare and file, and which are 

months away from being instituted, if they will be instituted at all. Sisvel will be unduly 

prejudiced by a stay in this case. Sisvel is the owner of the patents in this lawsuit and is entitled 

under the law to the timely enforcement of its patent rights. The status of the case also disfavors 

a stay as the IPR petitions have only recently been filed, beginning an 18-month adjudication 

process, while this case is at an advanced stage. Moreover, staying the case will not simplify the 

issues because HMD is not subject to estoppel pursuant to 35 U.S.C. § 315(e) and so the IPR 

process will not eliminate any of HMD’s invalidity arguments. 

Furthermore, HMD’s reliance on the Delaware Litigations2 is misplaced. There, Judge

Noreika agreed with Sisvel’s argument that a stay would normally be considered premature 

before any institution decisions from the Board, but decided to institute a stay in an attempt to 

align previously filed cases with the same parties and similar issues. In a case more similarly 

situated to the instant litigation, the Northern District of Texas denied defendants’ request for a 

stay pending the IPR petitions as being premature. 

Finally, HMD’s cited authorities are unavailing. In all four cases cited by HMD, the 

movants were petitioners in the IPRs or real parties in interest to the IPRs. That is not the case 

1 Unless otherwise noted, citations to Exhibits in this brief refer to the Exhibits attached to the cofiled Declaration of Stephanie Berger in Support of Plaintiffs’ Opposition to Defendants’ Motion 

to Stay.

2 HMD refers to these cases as “Sisvel 1”.

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here. However, other cases not cited by HMD, which are closer to the facts here, stand for the 

proposition that HMD’s Motion should be denied. 

II. BACKGROUND

On May 15, 2020, Sisvel filed its Complaint for patent infringement against HMD. (ECF 

No. 1.) The Complaint alleges infringement of Sisvel’s U.S. Patent Nos. 7,979,070 (the ’070 

patent), 8,600,383 (the ’383 patent), 8,189,611 (the ’611 patent), 7,215,653 (the ’653 patent), 

7,319,718 (the ’718 patent), 7,551,625 (the ’625 patent), 7,580,388 (the ’388 patent), 7,869,396 

(the ’396 patent), and 8,971,279 (the ’279 patent) (collectively the “Asserted Patents”). HMD 

requested multiple extensions to respond to the Complaint, (see ECF Nos. 7, 8), and to modify 

the scheduling order (ECF No. 19), until it finally answered the Complaint on October 2, 2021. 

(ECF No. 26.) 

On November 18, 2020, the Court entered the Scheduling Order that governs this case. 

(ECF No. 35.) The Scheduling Order provided for a claim construction hearing that has since 

been assigned to Special Master David K. Friedland. The Scheduling Order also sets the 

deadline for expert reports on September 20, 2021 and rebuttal reports on October 20, 2021. 

Both expert and fact discovery close on November 5, 2021. Dispositive motions are due 

December 8, 2021. Trial is set for April 11, 2022. Now, in the middle of this litigation, HMD 

moves for a stay based on IPR petitions it had nothing to do with, none of which have been 

instituted and where Sisvel has not even filed its preliminary response to all of the IPRs. (See

ECF No. 107 at 8.)

Two separate courts have considered stays in view of these IPRs. Unlike here, both of

these jurisdictions have cases with defendants that are Petitioners to the IPRs. The first was in 

the Northern District of Texas where the Court agreed that granting a stay before institution

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would be premature.3 Sisvel Int’l S.A. v. ZTE (USA), Inc., No. 3:20-cv-01289-M, ECF No. 43 

(N.D. Tex. June 21, 2021). In the second set of cases in the District of Delaware, the Court 

agreed it would be premature to issue a stay but for the fact that Sisvel had earlier accused the

same defendants of infringing different patents concerning similar technology in an earlier set of 

cases. Sisvel Int’l S.A. v. Dell, Inc., No. 1:20-cv-00651, Tr. 25:3-20 (D. Del. July 9, 2021) (Ex. 

B.) That is not the case here where there is only one patent infringement case against HMD. 

III. LEGAL STANDARDS

This Court’s “power to stay proceedings is incidental to the power inherent in every court 

to control the disposition of the cases on its dockets with economy of time and effort for itself, 

for counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). In patent 

litigation, the Court’s power to deny or grant a motion to stay remains discretionary when 

considering other proceedings pending before the United States Patent and Trademark Office. 

See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988); Benefit Funding Sys. LLC v. 

Advance Am. Cash Advance Ctrs. Inc., 767 F.3d 1383, 1384 (Fed. Cir. 2014) (district court 

denied motion to stay pre-institution of IPRs). 

In considering a motion to stay, courts in this District generally consider “whether: (1) a 

stay would cause undue prejudice or tactical disadvantage to the non-moving party; (2) a stay 

will simplify the issues in the case; and (3) discovery is complete and a trial date has been set.” 

DataQuill Ltd. v. Blu Prods., No. 20-20760-CIV-ALTONAGA/Goodman, 2020 U.S. Dist. 

LEXIS 197835, at *5 (S.D. Fla. Apr. 10, 2020) (denying motion to stay based upon IPR petition 

filed by a non-party). “The party moving for a stay bears the burden of showing why a stay is 

3 That case is currently stayed pending settlement discussions. 

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warranted . . . and delay tactics by the moving party weigh against a stay.” Id. (citations 

omitted). 

“The showing must be based on more than the mere fact that a petition for inter partes

review was filed.” Payrange, Inc. v. Kiosoft Techs., LLC, No. 20-20970-CIV-SMITH, 2020 

U.S. Dist. LEXIS 252940, at *4 (S.D. Fla. Nov. 23, 2020) (citation omitted). “A stay pending an 

administrative proceeding is not automatic; rather, it must be based upon the circumstances of 

the individual case before the court.” Automatic Mfg. Sys. v. Primera Tech., Inc., No 6:12-cv1727-Orl-37DAB, 2013 U.S. Dist. LEXIS 67790, at *3 (M.D. Fla. May 13, 2013). 

IV. ARGUMENT

A. HMD’s Motion Is Premature

HMD’s motion is premature. None of the IPR petitions have been instituted for review 

by the Board. In fact, Sisvel is still in the process of responding to a number of the petitions with

the first institution decision from the Board not expected until next month. Courts in this District

and in other jurisdictions routinely deny granting stays when the IPR petitions have not been 

instituted by the Board. See, e.g., Payrange, 2020 U.S. Dist. LEXIS 252940, at *6 (denying 

motion to stay based upon an IPR petition that had been filed but not instituted for review by the 

PTAB); DataQuill, 2020 U.S. Dist. LEXIS 197835, at *7 (same); Automatic Mfg. Sys., 2013 

U.S. Dist. LEXIS 67790, at *9 (same). In the Northern District of Texas, Chief Judge Lynn

agreed with Sisvel and denied defendant’s motion for a stay “[b]ecause the Patent Trial and 

Appeal Board has not yet instituted any of [defendant’s] IPR petitions.” Sisvel Int’l S.A. v. ZTE 

(USA), Inc., No. 3:20-cv-01289-M, ECF No. 43 (N.D. Tex. June 21, 2021) (Ex. C). 

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HMD’s reliance on unrelated Delaware Litigations4 is misplaced. The Delaware 

Litigations involve multiple defendants that are petitioners in the IPRs: Cradlepoint, Inc., Dell

Inc., Honeywell International, Inc., TCL Communication Technology Holdings Limited, TCT 

Mobile International Limited, TCT Mobile, Inc., TCT Mobile (US) Inc., and TCT Mobile (US) 

Holdings Inc. Second, the Delaware Litigations involve two phases of cases. The parties 

stipulated to a stay after the PTAB issued all of its institution decisions. Sisvel Int’l S.A. v. Dell, 

Inc., No. 1:19-cv-01247, ECF No. 65 (D. Del. Mar. 4, 2021) (Ex. D). Judge Noreika understood 

these differences when she instituted the stay of the second phase of cases. But HMD ignores 

these critical portions of Judge Noreika’s opinion, Sisvel Int’l S.A. v. Dell, Inc., No. 1:20-cv00651, Transcript (D. Del. July 9, 2021) (Ex. B), demonstrating that the posture of the cases in 

Delaware and in the Southern District of Florida are entirely different. Indeed, if there is one 

underlying theme of Judge Noreika’s opinion in the Delaware Litigations, it is the unique 

circumstances and overlapping cases that prompted her to even consider the motion to stay in the 

first place:

First, I want to highlight that this is an unusual case. This is a second round of 

litigation involving some of the defendants involved in the first round, or Sisvel 1; 

that ligation involved 12 patents, 11 of which are the subject of IPR. And the 

parties agreed to stay the litigation. This litigation involves nine different patents. 

But the infringement accusations have some degree of similarity to those in the 

prior a case in that they are based on practicing certain cellular standards. . . . It 

appears that the damages issues in the two cases may overlap, as will some of the 

defenses and counterclaims; thus, although, normally, I would not entertain a 

motion prior to a decision on institution, I will do so here. . . . And although in 

most cases it would be too early for me; as I have stated, because of the unusual 

circumstances here, I will not find that it is too early. 

(Ex. B at 25:3-18, 25:21-26:3, 29:8-12.)5 These unusual and overlapping circumstances are not 

present in this case. There is not a second set of patent litigation pending before this Court 

4 HMD refers to these cases as “Sisvel 1”. 

5 Unless otherwise indicated emphasis in this Brief has been added. 

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involving similar parties and additional patents that overlaps with the instant litigation. 

Furthermore, HMD’s assertion that “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” is false. 

(See Opening Br. at 9.) Sisvel only stipulated to stay with the defendants in the prior Delaware 

Litigation after the PTAB rendered every required institution decision for the IPR petitions. See 

Sisvel Int’l S.A. v. Dell, Inc., No. 1:19-cv-01247, ECF No. 65 (D. Del. Mar. 4, 2021) (Ex. D). 

As indicated above, the case pending in the Northern District of Texas is more like this 

case where a stay pending the IPR petitions was denied. See Sisvel Int’l S.A. v. ZTE (USA), Inc., 

No. 3:20-cv-01289-M, ECF No. 43 (N.D. Tex. June 21, 2021) (Ex. C). There, the court denied 

ZTE’s request for a stay on the exact same Asserted Patents in this case that were challenged by 

ZTE in the IPR petitions. Shortly thereafter, Sisvel and ZTE stipulated to a stay pending 

settlement negotiations. Id., ECF No. 47. Accordingly, this Court should deny HMD’s Motion 

as it would prevent the case from being delayed by non-party IPR petitions and in all likelihood 

bring the parties closer to resolution. 

B. HMD’s Motion Seeks a Tactical Advantage Over Sisvel

HMD’s motion seeks a tactical advantage over Sisvel. HMD is attempting to grab the 

benefit of other’s work without having to pay the price of being estopped from making the same 

invalidity arguments. Estoppel is a key portion of the inter partes review statutory framework 

that prevents defendants from asserting invalidity arguments that were raised or could have been 

raised in the IPR. Section 315(e)(2) provides that a petitioner or a real party in interest may not 

assert in a civil action that a patent claim is “invalid on any ground that the petitioner raised or 

reasonably could have raised” during the IPR. 35 U.S.C. § 315(e)(2). HMD admits that it is not 

statutorily estopped from asserting any invalidity positions from the IPRs. (Opening Br. at 10 

n.6.) This means that HMD can and will assert invalidity arguments throughout the remainder of 

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the case after the IPR process is complete. This will add prior art complexities and cost to the 

case that should be avoided. See Intellectual Ventures II LLC v. Kemper Corp., No. 6:16-cv00081, 2016 U.S. Dist. LEXIS 181431, at *9 (E.D. Tex. Nov. 7, 2016) (“The absence of a full 

statutory estoppel not only increases the ability of litigants to ‘game the system’ and devise an 

unfair second bit at the apple, it also has the potential to increase rather than reduce the 

complexity of the validity issues that may come before the Court.”) 

The burden is on HMD to demonstrate that a stay is warranted. HMD fails to meet this 

burden and shifts it to the Court: “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.” (See Opening Br. at 10 n.6.) Because HMD is 

neither a petitioner in the IPRs nor otherwise bound by any estoppel of 35 U.S.C. § 315, HMD 

will accrue the benefits of staying the litigation but will not incur any downside as none of its 

invalidity contentions will be eliminated. 

The Courts take a dim view of the type of coat tailing that HMD is attempting here. In 

DataQuill, the defendant sought a stay based on an IPR petition filed by another party, not the 

defendant, that had not yet been instituted by the PTAB. DataQuill, 2020 U.S. Dist. LEXIS 

197835, at *2. Even though the court observed that “[t]he asserted claims in this case all fall 

within the challenged claims that are subject of the IPR petition, and the IPR petition requests 

inter partes review of the challenged claims of the IPR Patent, as well as cancellation of those 

claims as unpatentable,” the court nonetheless was “not convinced a stay will simplify issues 

here, particularly given the number of claims [plaintiff] has asserted here and the small chance 

they will all be invalidated by an IPR.” Id. at *6. The court denied the stay and deemed 

defendant’s reliance on the non-party IPR petition as a “litigation tactic.” Id. 

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In this case, DataQuill is on point. HMD seeks a stay based on non-party IPR petitions, 

like the DataQuill defendant. While all of the Asserted Patents have been challenged by IPR 

petitions, not a single patent or claim has been subjected to inter partes review by the Board, 

much less invalidated. HMD’s attempt at this juncture to obtain a stay based on non-party IPR 

petitions that have not even been instituted yet is a litigation tactic that should result in this 

Court’s denial of the motion, as the court concluded in DataQuill. 

C. HMD’s Motion Unduly Prejudices Sisvel 

Sisvel would be unduly prejudiced by a stay in this case. HMD seeks to improperly 

delay this litigation which can only further prejudice Sisvel, while allowing HMD to avoid 

adjudication on the merits of this case. Such a delay will prevent a “just, speedy, and 

inexpensive determination,” which courts in this and other jurisdictions have repeatedly rejected. 

See Fed. R. Civ. P. 1; see also Automatic Mfg., 2013 U.S. Dist. LEXIS 67790, at *8 (holding a 

possible delay of “at least six months” would unduly prejudice plaintiff or present a clear tactical 

disadvantage when the petition for inter partes review had not been instituted); Payrange, 2020 

U.S. Dist. LEXIS 252940, at *5 (finding “that a stay would cause undue prejudice to [p]laintiff 

and would present a clear tactic advantage for [d]efendant” when the parties were engaged in 

discovery, a trial date had been set, and the PTAB had not initiated any review of the patent).

HMD argues that a stay “will not unduly prejudice Sisvel because it does not sell 

products, use the technology in its patents, or compete with HMD.” (See Opening Br. at 6.) But 

this is a misstatement of the law. “The patent owner should be able, if it desires, to prosecute its 

claims, to take discovery, and to set its litigation positions, at least until such a time as the 

USPTO takes an interest in reviewing the challenged claims.” Automatic Mfg., 2013 U.S. Dist. 

LEXIS 67790, at *8. Sisvel is the owner of the Asserted Patents. Sisvel has an interest in the 

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timely enforcement of its patents and those of its licensing partners, many of which do produce 

products, and would be prejudiced if HMD’s motion were granted.

D. The Status of the Case Disfavors a Stay

Here, the status of the case clearly disfavors a stay. As in the DataQuill case, “any trial 

date in this case will be well before the conclusion of the IPR proceedings.” 2020 U.S. Dist. 

LEXIS 197835, at *6. Claim construction briefing is complete and the parties are scheduled to 

confer with the Special Master this week. In discovery, the parties have produced volumes of 

documents and depositions will begin shortly. Given the early stage of the IPRs, this case will 

be over before any final written decisions may issue from the PTAB.

6 Accordingly, the status of 

the case disfavors a stay. 

E. Staying the Case Will Not Simplify the Issues 

HMD has not met its burden to demonstrate that a stay will simplify the issues in this 

case. The percentage values that HMD has calculated of “70 percent and 73 percent” are of its 

own creation and not one of the conclusions reached by the PTAB. (Opening Br. at 8) (“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.”) According to the PTAB, “less than 30% of challenged claims were found 

unpatentable by a preponderance of the evidence in final written decisions.” (See Opening Br., 

Exhibit 1 (ECF No. 107-3), at 4) (emphasis in original). HMD’s own evidence shows that 

approximately 70% of challenged claims are found not invalid. Id. HMD also fails to account 

for settlement or Sisvel prevailing on any of the institution decisions. All of HMD’s assertions 

6 In contrast, the cases in Delaware were much less advanced. (Ex. B, Tr. 26:17-27:3.) There, 

Judge Noreika found that the cases were “in the early stages of discovery . . . no claim construction 

has taken place in earnest . . . Trial is almost two years away.” (Id.)

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that all or most of the Asserted Patents will be invalidated by the Board is pure unsupported

speculation that does not warrant a stay. (See, e.g., Opening Br. at 8.) 

HMD’s arguments for issue simplification are not only inconsistent, but they are 

misleading. For example, HMD asserts–with no basis whatsoever–that the patents are of “low 

value and technical merit.” (See Opening Br. at 8, 9). Yet, as HMD admits elsewhere in its brief 

“[t]his is a large and complex patent litigation,” for which a Special Master is required to assist 

the Court for claim construction. (See Opening Br. at 10.) The Court would not have assigned a 

Special Master if the Asserted Patents were of “low value and technical merit.” Id. 

HMD’s argument that the discovery sought in France supports a stay is misplaced. (See

Opening Br. at 12.) The discovery that HMD seeks from ETSI primarily concerns the 

essentiality of the Asserted Patents to 3G and 4G standards and has nothing to do with the IPRs. 

(See Opening Br. at 12.) Also, ETSI publishes its standards documents online. See ETSI.org 

(Aug. 2, 2021), https://www.etsi.org/about. Accordingly, the issue of simplification disfavors a 

stay. 

F. HMD Cannot Support Its Position with Relevant Caselaw

The cases that HMD relies on–Targus, Rothschild, Intellectual Ventures, and Prisua–are 

unavailing. See Targus Int’l LLC v. Group III Int’l, Inc., No. 20-21435-Civ-Scola, 2021 U.S. 

Dist. LEXIS 3297, at *6 (S.D. Fla. Jan. 8, 2021) (IPR petitioner was a party to the litigation and 

claim construction briefing was in its infancy); Rothschild Storage Retrieval Innovations, LLC v. 

Motorola Mobility LLC, No. 14-22659-Civ-Scola, 2021 U.S. Dist. LEXIS 3297, at *3-6 (S.D. 

Fla. May 11, 2015) (stay granted before any hearing scheduled for claim construction); 

Intellectual Ventures I, LLC v. Motorola Mobility LLC, No. 13-61358-CIV-MIDDLEBROOKS/

HUNT, 2014 U.S. Dist. LEXIS 190674, at *3 (S.D. Fla. July 17, 2014) (IPR petitioner was a 

litigation defendant and no claim construction hearing had been held); Prisua Eng’g Corp. v. 

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Samsung Elecs. Co., 472 F. Supp. 3d 1183, 1185 (S.D. Fla. 2020) (stay granted only after PTAB 

agreed to review the challenged claims and IPR petitioners were parties to the litigation). In 

every case cited by HMD, the defendants were IPR petitioners or real parties in interest to the 

IPR proceedings. HMD is neither and can be denied a stay on that basis alone. 

The cited cases are also distinguishable in other ways that the Court should consider. For 

example, in both Targus and Rothschild, Judge Scola observed that the claim construction 

briefing was “in its infancy.” Targus, 2021 U.S. Dist. LEXIS 3297, at *6; Rothschild, 2021 U.S. 

Dist. LEXIS 3297, at *6. Here, claim construction briefing is over and final proceedings are 

underway with the Special Master. In Prisua, the court only granted the defendant’s motion to 

stay after the PTAB’s institution of the IPR. Prisua, 472 F. Supp. 3d at 1184. HMD is seeking a 

stay without any IPRs instituted. Finally, as indicated above, in Intellectual Ventures, the 

defendant filed three IPR petitions on the alleged patents before a stay was considered. 2014 

U.S. Dist. LEXIS 190674, at *3. HMD has not filed any. Thus, HMD’s Motion is unsupported 

by its own cited authority. 

V. CONCLUSION

For the reasons set forth above, HMD’s Motion should be denied. 

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Dated: August 3, 2021 Respectfully submitted,

/s/Jorge Espinosa/

Jorge Espinosa, Esq.

Florida Bar No: 779032

jorge.espinosa@gray-robinson.com

Francesca Russo, Esq.

francesca.russo@gray-robinson.com

Robert R. Jimenez, Esq.

robert.jimenez@gray-robinson.com

GRAY | ROBINSON, P.A.

333 S.E. 2nd Ave., Suite 300

Miami, FL 33131

Tel: 305-416-6880

Fax: 305-416-6887

Timothy Devlin (Pro hac vice) 

tdevlin@devlinlawfirm.com 

Neil Benchell, Esq. (Pro hac vice) 

nbenchell@devlinlawfirm.com 

Stephanie Berger, Esq. (Pro hac vice) 

Sberger@devlinlawfirm.com 

DEVLIN LAW FIRM LLC

1526 Gilpin Avenue 

Wilmington, Delaware 19806

Telephone: (302) 449-9010

Facsimile: (302) 353-4251

Attorneys for Plaintiffs

Sisvel International S.A.,

3G Licensing S.A., and Sisvel S.p.A

Case 1:20-cv-22051-DPG Document 111 Entered on FLSD Docket 08/03/2021 Page 16 of 17
16

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this 4th day of May 2021, I electronically filed the foregoing 

with the Clerk of Court by using the CM/ECF system, which will automatically send email 

notification of such filing to all counsel of record.

/s/Jorge Espinosa/ 

Jorge Espinosa, Esq.

Case 1:20-cv-22051-DPG Document 111 Entered on FLSD Docket 08/03/2021 Page 17 of 17