IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC,

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

Civil Action No. 6:20-cv-00505-ADA 

JURY TRIAL DEMANDED 

PLAINTIFF NEONODE SMARTPHONE LLC'S OPPOSITION TO APPLE INC.’S 

MOTION TO STAY PENDING TRANSFER

Case 6:20-cv-00505-ADA Document 33 Filed 11/12/20 Page 1 of 9
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I. INTRODUCTION 

The Court should deny Apple Inc.’s (“Apple’s”) Motion to Stay Pending Transfer (Dkt. 

#28), because Apple fails to show that any of the pertinent factors favor the imposition of a stay. 

Here, a stay would: 

 Prejudice Neonode Smartphone LLC (“Neonode”), which will suffer delay in the 

vindication of its patent rights for no justifiable purpose, in the face of Apple’s 

tactical gamesmanship surrounding the timing of its request for a stay; 

 Avoid no hardship purportedly to be suffered by Apple, which will be put to the 

task of producing invalidity contentions and participating the claim construction 

process regardless of whether this case progresses in this Court or in its favored 

venue, the Northern District of California; and 

 Conserve no judicial resources, as the Markman hearing in this action is set for 

April 8, 2021, giving this Court more than sufficient time to rule on Apple’s 

meritless transfer motion. 

Accordingly, Apple is not entitled to a stay. This Court should therefore deny Apple’s 

Motion. 

II. ARGUMENT 

Apple and Neonode agree that courts in this District consider three factors in determining 

whether a stay is warranted: (1) any potential prejudice to the non-moving party; (2) the hardship 

and inequity to the moving party if the action is not stayed; and (3) the judicial resources saved by 

avoiding duplicative litigation. YETI Coolers, LLC v. Home Depot U.S.A., Inc., 2018 WL 2122868, 

at *1 (W.D. Tex. Jan. 8, 2018). Apple contends that all three factors favor a stay of this case 

pending the resolution of Apple’s Motion to transfer. In fact, none of them do. 

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A. The Federal Circuit has not Instructed District Courts to Stay Cases Pending 

the Resolution of Transfer Motions 

Apple opens by citing several opinions that it characterizes as recognizing the importance 

of staying cases during the pendency of transfer motions. Apple oversells the significance of these 

cases. In In re Google Inc., 2015 WL 5294800 (Fed. Cir. 2015) (nonprecedential), the Federal 

Circuit granted a petition for mandamus and directed the district judge to rule on a transfer motion 

that had been pending for eight months and to stay proceedings in the case pending completion of 

the matter, due to “this passage of time and magistrate judge’s ordering of substantive development 

of the case.” Id., at *2. Here, there has been no such delay. In re Nintendo Co., 544 F. App’x 

934, 941 (Fed. Cir. 2013) (nonprecedential) involved a request to sever and stay claims against 

retailers of accused products and transfer the main case against the manufacturer to another district, 

not a request to stay the case pending resolution of a transfer motion. Enplanar, Inc. v. Marsh, 11 

F.3d 1284, 1291 (5th Cir. 1994) and Klein v. Silversea Cruises, Ltd., 2014 WL 7174299 (N.D. 

Tex. Dec. 16, 2014) merely stand for the proposition that a district court has discretion to stay 

proceedings, such as discovery, in appropriate circumstances; not a controversial proposition. 

Finally, DSS Tech. Mgmt. Inc., v. Apple Inc., No. 6:13-cv-919, Dkt. No. 83 (E.D. Tex. Oct. 28, 

2014) is simply a one-sentence order with no explanation or analysis. 

Apple next cites to several cases that it characterizes as “instruct[ing] District Courts and 

the parties to prioritize transfer motions before other substantive issues.” Here again, these cases 

shed little light on the issue of whether this action should be stayed pending the resolution of 

Apple’s transfer motion. In In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003), the district 

court waited thirteen months to rule on a motion to transfer, which prompted the circuit court to 

chide the district court on the delay; no such delay has occurred or is likely here. In In re Apple 

Inc., 456 F.App’x 907, 908 (Fed. Cir. 2012), the Federal Circuit denied one of Apple’s many 

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mandamus petitions seeking a writ requiring transfer of a patent case to the Northern District of 

California, on the ground (among others) that Apple had failed to file its petition until close to 

trial. This says nothing concerning whether this Court should stay this case. In re VTech 

Commc’ns, Inc., 2020 WL 46332 (Fed. Cir. Jan. 6, 2010) is to similar effect. Finally, in In re 

Fusion-IO, 489 F. App’x 465, 466 (Fed. Cir. 2012) (nonprecedential), Fusion-IO petitioned for a 

writ of mandamus instructing the district court to transfer a patent case from the Eastern District 

of Texas to the District of Utah. The Federal Circuit denied the petition, but noted that it expected 

Fusion I-O to “promptly request transfer in the lead case along with a motion to stay proceedings 

pending disposition of the transfer motion, and for the district court to act on those motions before 

proceeding to any motion on the merits of the action. This, however, followed the district court’s 

actions of consolidating the suit against Fusion I-O with “the originally filed case” and denying 

Fusion I-O’s motion to transfer “without prejudice to refiling the same motion in the first-filed 

case.” Id., at *1. The district court subsequently indicated that it would “address each motion to 

transfer venue, including Fusion–IO's motion, in a timely manner.” Accordingly, it is clear that the 

Federal Circuit’s guidance to the district court and the parties was predicated on the particular 

procedural history of the case. In any event, the Federal Circuit’s concern regarding possible 

“motion[s] on the merits of the action” is not present here, undercutting any argument that the 

court’s guidance in Fusion I-O states a rule that is applicable here. 

B. Apple Fails to Demonstrate that a Stay is Warranted Here 

1. A Stay Would Prejudice Neonode 

Apple contends that Neonode will suffer no prejudice due to a stay, because (i) it filed suit 

several years after the patents in suit issued, and (ii) Neonode seeks damages in this action. Neither 

of these is sufficient to negate the possibility of prejudice. Indeed, the principal case that it cites 

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in support of its position on these points, NFC Tech. LLC v. HTC Am., Inc., 2015 WL 1069111 

(E.D. Tex. Mar. 11, 2015) noted that a patent owner’s interest in vindicating its patent rights 

without delay is “entitled to weight,” and, after dismissing most of the patentee’s concerns 

regarding prejudice, held that “the prejudice factor cuts slightly against a stay, but no more than 

would typically be the case when a plaintiff is faced with the prospect of a delay in obtaining 

monetary relief on its claims.” Id., at *3. The court’s primary concern was the prospect for 

simplification of issues were the case to be stayed pending the resolution of an IPR. Apple does 

not predicate its Motion to Stay on such a ground. Accordingly, as the NFC court recognized, this 

factor cuts against the imposition of a stay. 

In addition, it is a little rich for Apple to complain of delay. Neonode filed its complaint 

in this action on June 8, 2020. (Dkt. #1) Apple waited nearly five months to file its motions to 

transfer and to stay this action, apparently for the tactical reason that it wished to obtain Neonode’s 

Preliminary Infringement Contentions (served on October 16, 2020) before seeking a transfer and 

stay of this action. And, it is clear that Apple’s primary intent in seeking a stay is to avoid the 

necessity of producing its Preliminary Invalidity Contentions on December 18, 2020, the date the 

parties jointly proposed in the Amended Proposed Scheduling Order. (Dkt. #32) Neonode will be 

prejudiced should Apple’s procedural gambit succeed. The Court should not reward Apple for 

this gamesmanship. 

2. Apple Will Suffer No Hardship if this Case Proceeds Under the AgreedUpon Schedule 

Apple contends that it will suffer hardship if a stay is not entered, because in the absence 

of a stay it will be required to produce invalidity contentions and participate in the claim 

construction process. However, it will be required to do both of these things regardless of whether 

a stay is entered, either in this Court or in the Northern District of California. (Ex. A [U.S. District 

Case 6:20-cv-00505-ADA Document 33 Filed 11/12/20 Page 5 of 9
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Court for the Northern District of California, Patent Local Rules]) While Apple asserts that the 

Patent Local Rules of the Northern District of California “differ from” this Court’s OGP, those 

rules do not differ so markedly as to dispense with either invalidity contentions or claim 

construction. Moreover, the claim construction process pursuant to the Northern District Patent 

Local Rules is sufficiently similar to the claim construction process in this Court that no additional 

burden would be likely were this Court to transfer this action to the Northern District (which it 

should not) after the claim construction process has commenced. For example, just as here, the 

next steps required under the Northern District rules would be: 

 The defendant’s production of invalidity contentions (N.D. Cal. PLR 3-3); 

 The parties’ exchange of proposed terms for construction (N.D. Cal. PLR 4-1); 

 The parties’ exchange of preliminary constructions and extrinsic evidence (N.D. 

Cal. PLR 4-2); 

 The parties file a joint claim construction and prehearing statement and expert 

reports (N.D. Cal. PLR 4-3); 

 The parties serve consecutive opening, opposition and reply claim construction 

briefs (N.D. Cal. PLR 4-5). 

(Ex. A, at PAT 5-6, 8-9) Under the proposed Amended Proposed Scheduling Order (Dkt. 32), the 

same steps will be taken, in nearly the identical order to that specified in the Northern District 

Patent Local Rules, in the pending action. Even were this Court to transfer this action to the 

Northern District, the exchanges of proposed claim terms and preliminary constructions would not 

need to be duplicated, and the filings in this Court could simply be reformatted and refiled in the 

Northern District. Moreover, while duplicative Markman hearings could potentially necessitate 

the expenditure of additional judicial and party resources, the Markman hearing in this action is 

Case 6:20-cv-00505-ADA Document 33 Filed 11/12/20 Page 6 of 9
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set for April 8, 2020 – nearly five months from now, more than sufficient time for this Court to 

rule on Apple’s transfer motion. So, denial of Apple’s Motion to Stay will not result in any 

duplication of effort or waste of judicial or party resources.1 

3. A Stay Would Not Conserve Judicial Resources 

Here, Apple merely reprises its argument that duplicative Markman proceedings will waste 

judicial resources. As shown above, that is simply not true, as the claim construction process in 

the Northern District of California and this Court are substantially identical in substance, and the 

threat of duplicative Markman hearings is remote. Accordingly, a stay would not conserve judicial 

resources. Moreover, it is premised on the embedded assumption that this Court will grant Apple’s 

transfer motion – an outcome that is speculative at best. E.g., EMG Tech., LLC v. Apple, Inc., 

Case No. 6:09-cv-367, Dkt. 270 at 6 (E.D. Tex. Nov. 15, 2010) (“Staying the case based solely on 

the speculation of what might possible happen . . . would be inefficient.”). 

III. CONCLUSION 

For the foregoing reasons, the Court should deny Apple's motion to stay. 

DATED: November 12, 2020 Respectfully submitted, 

By: /s/ Philip Graves 

Philip J. Graves (CA State Bar No. 153441) 

HAGENS BERMAN SOBOL SHAPIRO LLP 

301 North Lake Avenue, Suite 920 

Pasadena, CA 91101 

Telephone: (213) 330-7147 

Facsimile: (213) 330-7152 

Email: philipg@hbsslaw.com

 

1

 While it may be true that the parties (principally plaintiff Neonode) would be required to engage in additional, 

burdensome work were the Court to transfer this case to the Northern District of California, that would not reflect any 

“waste of judicial and party resources” pursuant to the schedule previously agreed to by the parties in this action, but 

rather the fact that the Northern District Patent Local Rules impose significant additional burdens on the parties during 

the claim construction process. 

Case 6:20-cv-00505-ADA Document 33 Filed 11/12/20 Page 7 of 9
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Greer N. Shaw (CA State Bar No. 197960) 

HAGENS BERMAN SOBOL SHAPIRO LLP 

301 North Lake Avenue, Suite 920 

Pasadena, CA 91101 

Telephone: (213) 330-7150 

Facsimile: (213) 330-7152 

Email: greers@hbsslaw.com

Craig D. Cherry 

State Bar No. 24012419 

ccherry@haleyolson.com 

Justin W. Allen 

State Bar No. 24081977 

jallen@haleyolson.com 

HALEY & OLSON, P.C. 

100 N. Ritchie Road, Suite 200 

Waco, Texas 76712 

913 Franklin Ave., Suite 201 

Waco, Texas 76701 

Telephone: (254) 776-3336 

Facsimile: (254) 776-6823 

Counsel for Plaintiff Neonode Smartphone LLC 

Case 6:20-cv-00505-ADA Document 33 Filed 11/12/20 Page 8 of 9
CERTIFICATE OF SERVICE 

I hereby certify that on the 12th day of November 2020, I electronically filed the foregoing 

with the Clerk of Court using the CM/ECF system which will send notification of such filing to 

the following: 

 /s/ Philip Graves 

 Philip Graves 

Betty H. Chen 

Fish & Richardson PC 

111 Congress Avenue, Suite 810 

Austin, TX 78701 

(512) 472-5070 

Fax: 512/320-8935 

Email: Bchen@fr.com 

Benjamin C. Elacqua 

Kathryn A. Quisenberry 

Fish and Richardson PC 

1221 McKinney Street Suite 2800 

Houston, TX 77010 

713-654-5300 

Fax: 713-652-0109 

Email: Elacqua@fr.com 

Email: Quisenberry@fr.com 

Attorneys for Defendant Apple Inc.

Jared A. Smith 

Fish & Richardson P.C. 

12860 El Camino Real, Suite 400 

San Diego, CA 92130 

(858) 678-5070 

Fax: (878) 678-5099 

Email: Jasmith@fr.com 

Aamir A. Kazi 

Fish & Richardson P.C. 

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 90309 

(404) 892-5005 

Fax: (404) 892-5002 

Email: kazi@fr.com 

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