IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

KIRSCH RESEARCH AND

DEVELOPMENT, LLC,

Plaintiff,

v.

TARCO SPECIALTY PRODUCTS, INC.,

Defendant.

Civil No. 6:20-cv-00318-ADA

JURY TRIAL DEMANDED

PATENT CASE

DEFENDANT TARCO SPECIALTY PRODUCTS, INC.’S OPPOSED MOTION 

TO STAY PENDING INTER PARTES REVIEW OF THE ’482 PATENT

Case 6:20-cv-00318-ADA Document 57 Filed 09/27/21 Page 1 of 16
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Table of Contents

Table of Contents ....................................................................................................................... ii

Table of Authorities ................................................................................................................... iii

I. Introduction ....................................................................................................................1

II. Procedural Background ................................................................................................. 2

A. The Status of the District Court Proceedings .....................................................2

B. The PTAB’s IPR Institution Decisions on the ’482 Patent ................................3

III. The Case Should Be Stayed Pending Resolution of the ’482 Patent IPR ..................... 4

A. Legal Standard ................................................................................................... 4

B. No Undue Prejudice Will Result From a Stay ................................................... 5

C. Issues in and Trial of this Case Will be Simplified by a Stay ..................... 7

IV. Conclusion ..................................................................................................................... 11

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Table of Authorities

ACTi Corp., 2013 WL 6334372, at *8-9 ........................................................... 5, 7

Arris Sols., 2017 WL 4536415, at *2 ............................................................... 6

Avago Techs. U.S., Inc. v. IPtronics, Inc., 

2013 U.S. Dist. LEXIS 21223, *8 (N.D. Cal. Feb. 15, 2013) ................................... 6

Cellular Comm’cs Equip., LLC v. Samsung Elecs. Co., Ltd.,

No. 6:14-cv-759, 2015 WL 11143485 (E.D. Tex. Dec. 16, 2015) ........................................ 4

Coho Licensing LLC v. Glam Media, 

No. C14-01576, 2014 WL 4681699, at *2 (N.D. Cal. Sept. 17, 2014) ......................... 8

Crossroads Systems, Inc. v. Dot Hill Systems Corp., 

2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015) ............................................. 5, 7, 8

Customedia Techs. LLC v. DISH Network, Corp.,

No. 2:16-cv-129, 2017 WL 3836123 (E.D. Tex. Aug. 9, 2017) ............................................ 9

CyWee Grp. Ltd. v. Samsung Elecs. Co.,

No. 2:17-cv-00140, 2019 WL 11023976 (E.D. Tex. Feb. 14, 2019) ..................................... 4, 11

E-Watch, Inc. v. Lorex Canada, Inc., 

Civil Action No. H–12–3314, 2013 WL 5425298, at *2 *

(S.D. Tex. Sept. 26, 2013) ............................................................................ 5

EchoStar Techs. Corp. v. TiVo, Inc.,

No. 5:05-cv-81, 2006 WL 2501494 (E.D. Tex. July 14, 2006) ............................................. 4, 9, 10

Emp’t Law Compliance, Inc., 2014 WL 3739770, at *2 .......................................... 6, 7

Ericsson Inc., et al. v. TCL Commc’n Tech. Holdings, Ltd.,

No. 2:15-cv-00011, 2016 WL 1162162 (E.D. Tex. Mar. 23, 2016) ....................................... 9

Ethicon, Inc. v. Quigg,

849 F.2d 1422 (Fed. Cir. 1998) ............................................................................................... 4

Evolutionary Intelligence, LLC v. Apple, Inc., 

No. C 13-04302 WHA, 2014 WL 93954, at *3 (N.D. Cal. Jan. 9, 2014) ........................ 8, 9

Evolutionary Intelligence, LLC v. Facebook, Inc., 

No. C 13-4202 SI, 2014 WL 261837, at *3 (N.D. Cal. Jan. 23, 2014) .......................... 5

Hebert v. Lisle Corp., 99 F.3d 1109, 1119 (Fed. Cir. 1996) ...................................... 5

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Landis v. N. Am. Co.,

299 U.S. 248 (1936) ................................................................................................................ 4

MEC Resources, LLC v. KEMET Electronics Corporation, 

No. 3:18-cv-2771 (N.D. Tex.) ......................................................................... 5

MEC Resources, LLC v. Vishay Americas, Inc., 

No. 3:18-cv-2770 (N.D. Tex.) ......................................................................... 5

Micrografx, LLC v. Google, Inc.,

No. 3:13-cv-3595, 2014 WL 12580455 (N.D. Tex. July 9, 2014) ................................. passim

Neste Oil OYJ v. Dynamic Fuels, LLC, 

No. 1:12- 1744-GMS, 2013 WL 3353984, at *4–5 (D. Del. July 2, 2013) ...................... 6

Network-1 Techs., Inc. v. Hewlett-Packard Co.,

976 F.3d 1301 (Fed. Cir. 2020) ................................................................................................10

NFC Tech. LLC v. HTC Am., Inc.,

No. 2:13-CV-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ............................... passim

Norman IP Holdings, LLC v. TP-Link Techs., Co.,

No. 6:13-cv-384, 2014 WL 5035718 (E.D. Tex. Oct. 8, 2014) .......................................... 8, 10

Regents of Univ. of Minn. v. LSI Corp., 

Case No. 5:18-cv-00821-EJD, 2018 WL 2183274, at *3 

(N.D. Cal. May 11, 2018) ............................................................................ 6

Select Comfort Corp. v. Tempur Sealy Int’l, Inc., 

No. 14-245 (JNE/JSM), 2014 WL 12600114, at *8 (D. Minn. Oct. 10, 2014) ............... 7

Semiconductor Energy Lab. Co. v. Chimei Innolux Corp., 

No. SACV 12-21-JST(JPRx), 2012 WL 7170593, at *4 (C.D. Cal. 2012) .................... 7

Target Therapeutics, Inc. v. SciMed Life Sys., Inc., 

No. C-94-20775 RPA(EAI), 1995 WL 20470, at *2 (N.D. Cal. 1995) ........................ 8

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I. Introduction

Defendant Tarco Specialty Products, Inc. respectfully requests that this case be stayed 

pending the two inter partes review (“IPR”) of the ’482 patent instituted by the PTAB on February 

18, 2021 (IPR2020-01389) and an additional IPR instituted on May 25, 2021 (IPR2021-

00192)(“GAF IPR”). (Ex. A, Dkt. 39.)

In its decision on IPR2020-01389, the PTAB found a reasonable likelihood of success that 

every claim of the ’482 patent will be shown to be unpatentable based on multiple prior art 

combinations. (Ex. B, Owens Corning Roofing & Asphalt, LLC v. Kirsch Research and 

Development, LLC, IPR2020-01389, Institution Decision, Paper 11). A stay of the ’482 patent 

would therefore result in a simplification of the issues here because the IPR is likely to eliminate 

at least some, if not all, of the ’482 patent’s asserted claims. It would waste judicial and party 

resources to continue litigating claims that are likely to be invalidated at the PTAB. And even if 

any claims survive IPR, the Court will benefit from the PTAB’s analysis of the scope of the ’482 

patent, the prior art, and the claim terms at issue here.

Kirsch stands to suffer no undue prejudice if the ’482 patent were stayed. The patent is 

expired and therefore Kirsch is only entitled to recover monetary damages should it prevail, a delay 

of which is insufficient to constitute undue prejudice. Kirsch’s own behavior also belies any need 

for urgency as Kirsch waited several years to bring these various actions and has agreed to 

numerous deadline extensions in the various cases it filed.

The stage of the litigation supports staying the case, with the bulk of the work remaining 

to be done by the parties. The parties have only begun written discovery and no depositions have 

been taken. Opening expert reports are not due until November 5, 2021, and trial is not until next 

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year. A stay of the ’482 patent is therefore warranted pending final written decisions in IPR2020-

01389 and IPR2021-00192.

II. Procedural Background

A. The Status of the District Court Proceedings

On April 24, 2020, Plaintiff Kirsch Research and Development, LLC filed sixteen 

complaints of patent infringement in district courts across the country.1 In seven of those cases, 

including this case against Tarco, only the ’482 Patent was asserted. In the remaining nine district 

court cases, Kirsch alleged infringement of both of U.S. Patent Nos. the ’482 Patent and U.S. 

Patent No. 8,765,251. On that same day, Kirsch also filed the ITC Investigation involving only the 

’251 Patent and alleging violations of Section 337 of the Tariff Act of 1930 (as amended, 19 U.S.C. 

§ 1337) against eight of the district court defendants, which did not include Tarco. The ITC 

Investigation was subsequently instituted on June 1, 2020. Kirsch moved to withdraw the 

Complaint and terminate the ITC Investigation on December 7, 2020. See ITC Investigation (Dec. 

7, 2020 Unopposed Motion to Withdraw the Complaint and Terminate the Investigation); see also 

1 The sixteen total cases includes the Complaint in this case. See (1) Kirsch Research and 

Development, LLC v. Atlas Roofing Corporation, Case No. 5:20-cv-00055 (EDTX); (2) Dorken 

Systems, Inc., Case No. 5:20-cv-00056 (EDTX); (3) DuPont de Nemours, Inc. and E.I. du Pont de 

Nemours and Company, Case No. 5:20-cv-00057 (EDTX); (4) FT Synthetics Inc., Case No. 5:20-

cv-00058 (EDTX); (5) CertainTeed Corporation, Case No. 3:20-cv-01024 (NDTX); (6) 

Continental Materials, Inc., Case No. 3:20-cv-01025 (NDTX); (7) GAF Corporation, Case 

No.3:20-cv-01028 (NDTX); (8) Intertape Polymer Corp., Case No. 3:20-cv-01029 (NDTX); (9) 

TAMKO Building Products LLC, Case No. 3:20-cv-01030 (NDTX); (10) Epilay, Inc., Case No. 

2:20-cv-03773 (CDCAL); (11) BlueLinx Corporation, Case No. 6:20-cv-00316 (WDTX); (12) KO 

Industries, Inc. and IKO Industries Ltd, Case No. 6:20-cv-00317 (WDTX); (13) IKO Industries, 

Inc., Case No. 6:20-cv-00317 (WDTX); (14) Underlayment Specialties Plus, LLC, Case No. 2:20-

cv-02023 (EDPA); (15) Owens Corning, Owens Corning Roofing & Asphalt, LLC, and InterWrap 

Corp., Case No. 5:20-cv-00901 (NDOH); (16) System Components Corporation, Case No. 5:20-

cv-00903 (NDOH).

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Kirsch Rsch. And Dev. v. DuPont de Nemours, Inc., No. 5:20-CV-00057-RWS (E.D. Tex., Dec. 

7, 2020).

B. The PTAB’s IPR Institution Decisions on the ’482 Patent

On February 18, 2021, the PTAB instituted an IPR on all 34 claims of the ’482 patent in

IPR2020-01389, brought by Owens Corning Roofing & Asphalt, LLC (“OC”). (Dkt. No. 39, 

Exhibit A.) In its decision, the PTAB found that OC had demonstrated a reasonable likelihood of 

prevailing in showing the unpatentability of all 34 of the ’482 patent’s claims. (Exhibit B, Owens 

Corning Roofing & Asphalt, LLC v. Kirsch Research and Development, LLC, IPR2020-01389, 

Institution Decision, Paper 11 (P.T.A.B. Feb. 18, 2021) at 23-38.) The PTAB was also persuaded 

that OC had shown a reasonable likelihood of succeeding on every one of its 10 asserted grounds, 

which include both anticipation and obviousness theories, and 10 different combinations of prior 

art. (Id.) The Final Written Decision in that IPR is due by February 18, 2022.

Additionally, the PTAB instituted a second IPR (“GAF IPR”) challenging all claims of the 

’482 Patent on May 25, 2021. (Ex. C, GAF Materials LLC v. Kirsch Research and Development, 

LLC, IPR2021-00192, Institution Decision, Paper 14 (P.T.A.B. May 25, 2021).) In its decision 

instituting the GAF IPR, the PTAB analyzed each of the grounds asserted by Petitioner GAF 

against every claim of the ’482 Patent and found that GAF had demonstrated a reasonable

likelihood that it will prevail in showing the unpatentability of every claim of the ’482 Patent on 

each ground asserted. (Id.) GAF’s Petition was based on different grounds than those asserted by 

Petitioner Owens Corning in the previously instituted IPR (“Owens Corning IPR”). (Compare id. 

at 8 with Ex. B, Owens Corning Roofing & Asphalt, LLC v. Kirsch Research and Development, 

LLC, IPR2020-01389, Institution Decision, Paper 11 (P.T.A.B. Feb. 18, 2021) at 8.) In instituting 

the Owens Corning IPR, the Board had likewise analyzed each of the wholly separate grounds

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asserted there and found that Petitioner Owens Corning had demonstrated a reasonable likelihood 

that it will prevail in showing the unpatentability of every claim of the ’482 Patent on all asserted 

grounds.

III. The Case Should Be Stayed Pending Resolution of the Two ’482 Patent IPRs

A. Legal Standard

A district court has the inherent power to control its own docket. Landis v. N. Am. Co., 299 

U.S. 248, 254 (1936). This power includes “the authority to order a stay pending conclusion of a 

PTO reexamination.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1998). In deciding 

whether to grant a stay pending an IPR, courts consider: (1) whether the stay will likely result in 

simplifying the case; (2) whether the stay will unduly prejudice the nonmoving party; and (3) 

whether the proceedings before the court have reached an advanced stage.” NFC Tech. LLC v. 

HTC Am., Inc., No. 2:13-CV-1058, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015).

“Essentially, courts determine whether the benefits of a stay outweigh the inherent costs

based on these factors.” EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-cv-81, 2006 WL 2501494,

at *1 (E.D. Tex. July 14, 2006). A stay is apt if “the outcome of a PTO proceeding is likely to

assist the court in determining patent validity or eliminate the need to try infringement issues.”

NFC Tech., at *1. Thus, “after the PTAB has instituted review proceedings, the district court

litigation ordinarily should be stayed.” Id., at *7; CyWee Grp. Ltd. v. Samsung Elecs. Co., No.

2:17-cv-00140, 2019 WL 11023976, at *3 (E.D. Tex. Feb. 14, 2019) (noting the “liberal policy”

in favor of “stays pending IPR proceedings”); Cellular Comm’cs Equip., LLC v. Samsung Elecs.

Co., Ltd., No. 6:14-cv-759, 2015 WL 11143485, at *3 (E.D. Tex. Dec. 16, 2015) (“courts have

been nearly uniform in granting motions to stay when the PTAB instituted inter partes review”).

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B. No Undue Prejudice Will Result From a Stay

Granting the requested stay will not prejudice Kirsch. Kirsch cannot allege prejudice based 

on delay for multiple reasons. As an initial matter, it is well-settled that delay caused by the IPR 

process, without more, does not justify denying a stay.2 In any event, any delay arising from a stay 

would be reasonable, particularly in view of the benefits that would arise from PTAB review.

Moreover, because the ’482 Patent expired prior to the filing of the Complaint, Kirsch is 

limited to monetary damages within a fixed time frame. Courts have consistently found that the 

delay of potential monetary relief is not unduly prejudicial. Crossroads Systems, Inc. v. Dot Hill 

Systems Corp., 2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015) (“[M]ere delay in collecting 

[monetary] damages does not constitute undue prejudice.”) (Sparks, J.); Evolutionary Intelligence, 

LLC v. Facebook, Inc., No. C 13-4202 SI, 2014 WL 261837, at *3 (N.D. Cal. Jan. 23, 2014) 

(granting pre-institution stay, noting “[c]ourts have consistently found that a patent licensor cannot 

be prejudiced by a stay because monetary damages provide adequate redress for infringement”) 

(quotation omitted); Hebert v. Lisle Corp., 99 F.3d 1109, 1119 (Fed. Cir. 1996) (“When the 

patentee does not seek to make and sell the invention, lost profits are not an appropriate measure 

of damages.”). Courts have regularly found no undue prejudice and granted motions to stay 

pending IPR institution in similar circumstances. See, e.g., MEC Resources, LLC v. KEMET 

Electronics Corporation, No. 3:18-cv-2771 (N.D. Tex.) Dkt. No. 22 (May 6, 2019 Order granting 

stay in view of IPR); MEC Resources, LLC v. Vishay Americas, Inc., No. 3:18-cv-2770 (N.D. Tex.) 

2 See ACTi Corp., 2013 WL 6334372, at *8-9 (“[T]he mere fact and length of any delay . . . does 

not demonstrate prejudice sufficient to deny [a] request for a stay.”); Micrografx, 2014 WL 

12580455, at *1 (citing E-Watch, Inc. v. Lorex Canada, Inc., Civil Action No. H–12–3314, 2013 

WL 5425298, at *2 *(S.D. Tex. Sept. 26, 2013)). Indeed, “inter partes review was designed to 

create efficiencies and ‘proceed in a timely fashion.’” Micrografx, 2014 WL 12580455, at *1 

(quoting Lorex, 2013 WL 5425298, at *2).

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Dkt. No. 25 (May 6, 2019 Order granting stay in view of IPR); Micrografx, LLC v. Google, Inc., 

No. 3:13-cv-3595-N, 2014 WL 12580455, at *2 (N.D. Tex. July 9, 2014) (“[Plaintiff] does not 

seek injunctive relief and does not practice the patents-in-suit.”); Emp’t Law Compliance, Inc., 

2014 WL 3739770, at *2 (Plaintiff “fail[ed] to show that the parties are direct competitors or how 

it would be adversely affected by a stay.”); see also Neste Oil OYJ v. Dynamic Fuels, LLC, No. 

1:12- 1744-GMS, 2013 WL 3353984, at *4–5 (D. Del. July 2, 2013) (granting pre-institution stay 

even when parties were indirect competitors).

Finally, any purported undue prejudice or disadvantage to Kirsch results solely from its 

own actions. It was Kirsch’s decision to wait until after the ’482 Patent expired to file this action 

against Tarco, despite the fact that the sole inventor and Kirsch’s founder assigned the ’482 patent 

to Kirsch eleven years earlier in 2009. Kirsch cannot therefore reasonably claim that a stay would 

result in undue prejudice or disadvantage stemming from witnesses or evidence being less readily 

available or from memories fading during the course of the stay, as such loss has likely already 

occurred during Kirsch’s eleven-year delay in filing this case. See, Regents of Univ. of Minn. v. 

LSI Corp., Case No. 5:18-cv-00821-EJD, 2018 WL 2183274, at *3 (N.D. Cal. May 11, 2018); 

Arris Sols., 2017 WL 4536415, at *2. Any risk of additional loss of evidence during the stay is 

unlikely and would in any event be a result of Kirsch’s own actions. In fact, courts in similar 

circumstances have found that a stay of the entire action would not prejudice the plaintiff and was 

warranted. See, e.g., Avago Techs. U.S., Inc. v. IPtronics, Inc., 2013 U.S. Dist. LEXIS 21223, *8 

(N.D. Cal. Feb. 15, 2013) (granting stay based in part on finding that any prejudice was “minimal 

and largely of Plaintiff’s own making”).

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C. Issues in and Trial of this Case Will be Simplified by a Stay

Denying a stay in this case may lead to inconsistent results across multiple proceedings, 

including possibly conflicting invalidity determinations and inconsistent claim constructions of 

claim terms. Indeed, the need for avoiding such conflicts was an important factor in the stays 

granted in the three co-pending district court cases alleging infringement of the ’482 Patent.3 The 

risk of inconsistent invalidity determinations and claim construction findings is further 

compounded by the pending ’482 IPR.

Many of the issues before the Court will likely be simplified upon resolution of the pending 

IPR proceedings involving the asserted ’482 Patent. Whether an IPR proceeding will result in 

simplification of the issues before the Court is “the most important factor” when evaluating a 

motion to stay pending IPR. NFC Techs., 2015 WL 1069111, at *4. As similarly situated courts 

have observed in comparable cases, “if the USPTO invalidates any of the . . . patents-in-suit at 

issue or changes the scope and terms of any claim, the matters at issue in this Court will change,” 

and “[i]f the USPTO declines IPR regarding the [] patents-in-suit at issue in [the IPR petitions], 

little time will be lost before the stay is lifted.” ACTi Corp., 2013 WL 6334372, at *7 (finding that 

a stay was appropriate based on IPR petitions even when the defendant would not have been 

subject to IPR estoppel); Crossroads Systems, 2015 WL 3773014, at *3 (“If, for example, the 

PTAB were to determine the claims were invalid, the case could effectively be over.”).4

3 See Kirsch v. Owens Corning Roofing & Asphalt, LLC, and Interwrap Corp., Case No. 1:20-cv-00901 (NDOH) at 

Dkt. No. 25 (August 10, 2020 Order granting stay); Kirsch v. System Components Corporation, Case No. 5:20-cv00903 (NDOH) at Dkt. No. 23 (Aug. 10, 2020 Order granting stay as to the ’482 and ’251 Patents); Kirsch v. Epilay, 

Inc., Case No. 2:20-cv-03773 (CDCAL) at Dkt. No. 26 (Aug. 4, 2020 Order granting stay as to the ’482 and ’251 

Patents).

4 See also Emp’t Law Compliance v. Compli, Inc., No. 3:13-cv-3574-N, 2014 WL 3739770, at *2 (N.D. Tex. May 27, 

2014); Micrografx, LLC v. Google, Inc., No. 3:13-cv-3595-N, 2014 WL 12580455, at *2 (N.D. Tex. July 9, 2014); 

Semiconductor Energy Lab. Co. v. Chimei Innolux Corp., No. SACV 12-21-JST(JPRx), 2012 WL 7170593, at *4 

(C.D. Cal. 2012) (“Waiting for the outcome of the reexamination could eliminate the need for trial if the claims are 

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A stay would also simplify prior-art related discovery, trial, and any dispositive briefing 

on invalidity. See Norman IP Holdings, LLC v. TP-Link Techs., Co., No. 6:13-cv-384-JDL, 2014 

WL 5035718, at *3 (E.D. Tex. Oct. 8, 2014) (“Staying the litigation pending the PTAB’s 

determination of the validity of all the asserted claims of the three patents-in-suit could narrow the 

issues before the court, prevent duplicative or unnecessary discovery, and encourage settlement or 

dismissal.”). Furthermore, the PTAB’s initial decision will provide claim construction analysis to 

supplement the existing intrinsic record that this Court could ultimately consider in deciding claim 

construction and validity. See Evolutionary Intelligence, LLC v. Apple, Inc., No. C 13-04302 

WHA, 2014 WL 93954, at *3 (N.D. Cal. Jan. 9, 2014) (noting that the IPR record “may also clarify 

claim construction positions for the parties, raise estoppel issues, and encourage settlement.”); see 

also Lorex, 2013 WL 5425298, at *2 (In issuing a pre-institution IPR stay, the court considers the 

potential for “simplification of the issues,” not “total resolution of the case.”).

Not granting the stay would have the opposite effect, however, potentially complicating 

the issues in the case. When an IPR petition is pending, “[a]s the Court has stated before, 

[p]roceeding to trial could therefore prove to be extraordinarily wasteful of both the parties’ 

resources and the Court’s resources.” Crossroads Systems, 2015 WL 3773014, at *3 (internal 

quotations and citations omitted); see also Select Comfort Corp. v. Tempur Sealy Int’l, Inc., No. 

14-245 (JNE/JSM), 2014 WL 12600114, at *8 (D. Minn. Oct. 10, 2014) (“not granting a stay could 

result in the parties and Court wasting significant time and resources.”); Coho Licensing LLC v. 

Glam Media, No. C14-01576, 2014 WL 4681699, at *2 (N.D. Cal. Sept. 17, 2014) (“A stay may 

also be granted in order to . . . avoid needless waste of judicial resources.”). There is “little” if any 

cancelled or, if the claims survive, facilitate trial by providing the court with expert opinion of the USPTO and

clarifying the scope of the claims.”) (quoting Target Therapeutics, Inc. v. SciMed Life Sys., Inc., No. C-94-20775 

RPA(EAI), 1995 WL 20470, at *2 (N.D. Cal. 1995)).

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benefit to litigating validity in district court while the same issues are being litigated before the 

PTAB. See Evolutionary Intelligence, 2014 WL 93954, at *3 (“There is also little benefit to be 

gained from having two forums review the validity of the same claims at the same time.”). 

In its IPR institution decision regarding the ’482 patent, the PTAB found a reasonable

likelihood that every claim of the ’482 patent would be proven unpatentable. (Exhibit B at 23-38.) 

It was not persuaded by Kirsch’s arguments regarding any of the ’482 patent’s claims. (Id.) Thus, 

the IPR is not only likely “to assist the court in determining patent validity” with respect to the 

’482 patent, but it is likely to “eliminate the need to try infringement issues” on that patent 

altogether, and therefore a “stay is particularly justified.” See NFC Tech., at *1. It would therefore 

“be an egregious waste of both the parties’ and the Court’s resources” if discovery, depositions, 

expert discovery, dispositive motions, trial preparations, and trial on the ’482 patent “went forward 

and the claims were subsequently declared invalid ...” EchoStar, at *4; Customedia Techs. LLC 

v. DISH Network, Corp., No. 2:16-cv-129, 2017 WL 3836123, at *2 (E.D. Tex. Aug. 9, 2017) 

(benefits of a stay “outweighed” any “potential costs, delay, or prejudice” even though the Board 

did not institute IPR as to one of the asserted claims).

Further, any statements made by Kirsch in the IPR will be part of the intrinsic record and

staying the case will allow the parties and the Court to consider those statements during claim

construction. Ericsson Inc., et al. v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-cv-00011, 2016 

WL 1162162, at *3 (E.D. Tex. Mar. 23, 2016) (granting stay and noting “the claim construction 

positions taken by the parties before the PTAB may inform subsequent claim construction 

proceedings in this Court.”). 

Staying the ’482 patent will also prevent duplicative and potentially inconsistent claim

construction efforts. The PTAB, which now uses the same claim construction standard as the

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district court, has made clear that construction of at least one term that is also at issue here

(“extrusion lamination”) will be necessary. (See Exhibit B at 15-16 (“certain of Patent Owner’s 

arguments ... appear to present an issue of claim construction, undeveloped on the present record, 

with respect to the term ‘extrusion lamination’” and “[t]he parties should address this term, in 

accordance with our Rules, during trial to the extent they believe it necessary”); Exhibit C at 19-

22 (identifying “extrusion lamination” as requiring construction in the parties’ Local Patent Rule 

4-3 Joint Claim Construction Chart regarding the ’482 patent).) Thus, if the case is stayed, the 

Court will have the benefit of Kirsch’s statements that will become part of the intrinsic record, as 

well as the PTAB’s analysis of those statements and its claim constructions.

Furthermore, as Kirsch is likely to raise the issue of estoppel in the context of the

simplification of issues, Defendant Tarco is willing to be estopped by any Final Written Decision

entered in the instituted OC IPR to the same extent to which they would have been estopped had

they joined in OC’s IPR in the manner explained by the Federal Circuit in Network-1 Techs., Inc.

v. Hewlett-Packard Co.. 976 F.3d 1301, 1313 (Fed. Cir. 2020) (a party joining in an IPR is not

statutorily estopped from raising invalidity grounds other than those that were actually instituted). 

Namely, Defendants agree to be estopped with respect to any grounds decided in the Final Written 

Decision in OC’s IPR. Id. A stay of the ’482 patent pending the OC IPR would therefore simplify 

numerous issues regarding the ’482 patent and eliminate others. See e.g., Norman IP, at *3 (finding 

that defendant’s agreement “to be estopped from asserting invalidity contentions raised and 

adjudicated in the [non-party] IPR proceedings, further simplifies the issues in the present 

litigation”); EchoStar, at *2 (benefits of a completed reexamination include: prior art considered 

by the PTO; discovery problems potentially alleviated; dismissal of the suit or encouragement to 

settle; reduction in complexity and length of litigation; issues, defenses, and evidence narrowed; 

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and reduction of costs); CyWee, at *8 (“it does not matter whether [defendant] has raised—or can 

raise—the same prior art references that are raised in the IPR proceeding” because “[i]f the PTAB 

holds that the claims at issue in the IPR are invalid, the result will be that those claims will be 

canceled, and they will not be available to [plaintiff] in ... litigation”).

The issue simplification and judicial efficiencies described above will substantially reduce 

the burdens on the Court and the parties in the event that any litigation after the stay is necessary. 

For the parties, there will be no need to litigate in parallel the validity of the ’482 Patent both in 

this Court and in the PTAB. The parties and the Court may avoid wasting resources on claims that 

the PTAB eventually invalidates or that the patent owner may amend through that process.

IV. CONCLUSION

For the reasons set forth above, Tarco respectfully requests that this Court stay the case in 

view of the pending the’482 IPRs.

Dated: September 27, 2021 Respectfully submitted,

MARTIN, DISIERE, JEFFERSON & WISDOM, L.L.P.

By: /s/ M. Jason Spivey

M. JASON SPIVEY

State Bar No. 24051369

spivey@mdjwlaw.com

MARK J. DYER

State Bar No. 06317500

dyer@mdjwlaw.com

RYAN K. GEDDIE

State Bar No. 24055541

geddie@mdjwlaw.com

9111 Cypress Waters Blvd., Ste. 250

Dallas, Texas 75019

214-420-5500

214-420-5501 (fax)

Case 6:20-cv-00318-ADA Document 57 Filed 09/27/21 Page 15 of 16
12

DEREK GILLILAND

State Bar No. 24007239

SOREY & GILLILAND, LLP

133 E. Tyler

Longview, Texas 75601

903-230-5600 

903-230-5656 (fax)

derek@soreylaw.com

ATTORNEYS FOR DEFENDANT

TARCO SPECIALTY PRODUCTS, INC.

CERTIFICATE OF SERVICE

This is to certify that a true and correct copy of the foregoing instrument has been e-served 

to all attorneys of record, in compliance with the FEDERAL RULES OF CIVIL PROCEDURE, on this 

the 27th day of September 2021.

Elizabeth L. DeRieux 

Capshaw DeRieux, LLP 

RUSS, AUGUST & KABAT 

114 E. Commerce Ave. 

Gladewater, TX 75647 

Marc A. Fenster (CA Bar No. 181067) 

Benjamin T. Wang (CA Bar No. 228712) 

Amy E. Hayden (CA Bar No. 287026) 

Theresa M. Troupson (CA Bar No. 301215) 

Jonathan Ma (CA Bar No. 312773) 

RUSS, AUGUST & KABAT 

12424 Wilshire Boulevard, 12th Floor 

Los Angeles, California 90025 

Matthew D. Aichele 

RUSS AUGUST & KABAT 

800 Main Avenue, SW, Suite 200 

Washington, DC 20024 

K. Andrew Kent (CA Bar No. 130097) 

RINCON VENTURE LAW GROUP 

2801 Townsgate Road, Suite 200 

Westlake Village, CA 91361 

/s/M. Jason Spivey

M. JASON SPIVEY

Case 6:20-cv-00318-ADA Document 57 Filed 09/27/21 Page 16 of 16