IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL 

INC., AND EMC CORPORATION, 

Defendants.

Case No. 6:20-cv-00477-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ REPLY IN SUPPORT OF MOTION TO STAY PENDING

INTER PARTES REVIEW

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 1 of 12
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TABLE OF CONTENTS

Page

INTRODUCTION............................................................................................................. 1

ARGUMENT .................................................................................................................... 1

A. WSOU Has Not Articulated Any Undue Prejudice That It Would Suffer 

From A Stay.............................................................................................................1

B. WSOU Offers Nothing That Contradicts The Strength Of Defendants’ IPR 

Petition .....................................................................................................................3

C. WSOU Mischaracterizes The Extent Of Discovery Conducted In This 

Case..........................................................................................................................4

CONCLUSION ................................................................................................................. 5

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 2 of 12
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TABLE OF AUTHORITIES

Cases

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

No. 13-CA-800-SS, 2015 WL 3773014 (W.D. Tex. June 16, 2015).........................................1

Lubrizol Specialty Prods., Inc. v. Baker Hughes Inc.,

2017 WL 2255579 (S.D. Tex. May 23, 2017)...........................................................................4

MiMedx Group, Inc. v. Tissue Transplant Tech. Ltd.,

2015 WL 11573771 (W.D. Tex. Jan. 5, 2015) ..........................................................................1

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

No. 2:13–CV–1058–WCB, 2015 WL 1069111 (E.D. Tex. 2015) ............................................1

PersonalWeb Techs., LLC v. Facebook, Inc.,

No. 5:13-CV-01356-EJD, 2014 WL 116340 (N.D. Cal. Jan. 13, 2014)....................................1

Statutes

35 U.S.C. § 311(b)...........................................................................................................................4

35 U.S.C. § 315(e)(2).......................................................................................................................4

Regulations

37 C.F.R. § 42.100(c).......................................................................................................................2

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TABLE OF ABBREVIATIONS

Abbreviation Term

’272 IPR IPR No. 2021-00272

’489 patent U.S. Patent No. 8,913,489

Defendants Dell Technologies Inc., Dell Inc., and EMC Corporation

FWD Final Written Decision

IPR Inter partes review

Motion or Mot. Defendants’ Motion to Stay Pending Inter Partes Review (D.I. 

110)

Opposition or Opp. WSOU’s Response Opposing Motion To Stay (D.I. 113)

PTAB Patent Trial and Appeal Board

WSOU or Plaintiff WSOU Investments, LLC d/b/a Brazos Licensing and 

Development

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 4 of 12
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TABLE OF EXHIBITS1

Exhibit Description

Ex. 10 PTAB Trial Statistics FY20 End of Year Outcome Roundup IPR, PGR, CBM

(available at 

https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2020_roundup.pdf)

1 All exhibits are attached to the Declaration of Brian A. Rosenthal in Support of Defendants’ 

Motion to Stay Pending Inter Partes Review (“Rosenthal Declaration”) (D.I. 110-1) and 

Supplemental Declaration of Brian A. Rosenthal in Support of Defendants’ Motion to Stay 

Pending Inter Partes Review (“Supplemental Rosenthal Declaration”).

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INTRODUCTION

This case should be stayed pending the recently instituted IPR on all four asserted grounds 

covering all 20 claims of the only asserted patent.

2

 Defendants explained why all three factors 

considered by courts weigh strongly in favor of granting a stay, and WSOU has failed to offer any 

compelling evidence or argument to the contrary.3

ARGUMENT

A. WSOU Has Not Articulated Any Undue Prejudice That It Would Suffer From A 

Stay

WSOU does not dispute that it can be made whole with money damages in the event that 

any claims of the ’489 patent are upheld by the PTAB and found infringed at a subsequent trial. 

Mot. at 7. WSOU generically claims that a stay would “depriv[e] it of a timely jury trial” (Opp. 

at 5), but the delay inherent in a stay of a case does not itself constitute undue prejudice. See NFC 

Tech. LLC v. HTC America, Inc., No. 2:13–CV–1058–WCB, 2015 WL 1069111, at *2 (E.D. Tex. 

2015); PersonalWeb Techs., LLC v. Facebook, Inc., No. 5:13-CV-01356-EJD, 2014 WL 116340, 

at *5 (N.D. Cal. Jan. 13, 2014); Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. 13-CA-800-SS, 

2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015) (finding no undue prejudice as “mere delay 

in collecting [] damages does not constitute undue prejudice”). Instead of addressing the cases 

Defendants set forth in the Motion, WSOU relies on an inapposite case between direct competitors

where IPRs had yet to be instituted and discovery was almost over. See Opp. at 5; MiMedx Group, 

Inc. v. Tissue Transplant Tech. Ltd., 2015 WL 11573771, at *2 (W.D. Tex. Jan. 5, 2015) (denying 

2 WSOU seeks to avoid any analysis by this Court of the specific merits of the Motion, arguing, in 

the very first sentence of its opposition, that: “This Court has always denied motions like Dell’s 

that seek a stay pending inter partes review.” Opp. at 1.

3 As explained in the Motion, Defendants conferred with WSOU about staying the case and WSOU 

refused. See Mot. at 3, 9; Ex. 4; Ex. 6. WSOU’s claim that it had no notice of the Motion is 

disingenuous, at best. Opp. at 1.

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 6 of 12
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motion to stay, noting that the parties were direct competitors, the IPRs had not yet been instituted, 

and the discovery deadline was just weeks away).

WSOU ignores that the currently scheduled trial date for each of their twelve cases against 

Defendants is uncertain, and that the FWD is likely to issue before trial could occur. Mot. at 7-8. 

WSOU also hypothesizes—without providing any statistics—that the one-year statutory deadline 

for a FWD might be extended. See Opp. at 5. But WSOU provides no reason to expect such an 

extension, which would be highly unlikely given that the PTAB found Defendants’ IPR petition 

to be straightforward. Ex. 1 at 14. In fact, statistics suggest that less than 1% of FWDs are subject 

to such an extension.4

 And while there might be an appeal from the FWD, the Court can order a 

joint status report within seven days of issuance to reevaluate the situation in light of the FWD. A 

decision need not be made now on how this case will progress during a hypothetical IPR appeal. 

WSOU also cannot plausibly allege undue prejudice from delay because it has not 

diligently prosecuted this case.5 In the three weeks since this Motion was filed, WSOU has not 

meaningfully progressed discovery. A protective order still has not been entered, and WSOU has 

produced no documents. There is simply no urgency. Thus, this case can be stayed without unduly 

prejudicing WSOU.

4 In Fiscal Year 2020, the PTAB issued over 500 FWDs. See Ex. 10 at 3 (PTAB Trial Statistics 

FY20 End of Year Outcome Roundup IPR, PGR, CBM). While not the exact same time period, a 

search of Docket Navigator records indicated that only four extensions under 37 C.F.R. § 42.100(c) 

were granted over the past year (from September 1, 2020 to August 31, 2021). See Supplemental 

Rosenthal Declaration ¶ 3.

5 WSOU’s argument that Defendants “tactically” delayed filing the IPR is baseless. Opp. at 5. 

Defendants filed expeditiously just weeks after WSOU served its preliminary infringement 

contentions, which identified for the first time all 20 claims of the ’489 patent as the asserted 

claims. Mot. at 2, 8-9. The PTAB agreed. Ex. 1 at 10-11 (IPR Institution Decision) (“[W]e agree 

with [Dell] that it acted promptly by filing its Petition at the early stages of the litigation[.]”).

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B. WSOU Offers Nothing That Contradicts The Strength Of Defendants’ IPR 

Petition

The PTAB found that “the merits of Petitioner’s case are straightforward and strong.” Ex. 

1 at 14. In fact, the PTAB did not find a single fault in Defendants’ petition, noting that it was 

“persuaded that Petitioner [had] demonstrated a reasonable likelihood that it will succeed on [all 

of its four] challenges to patentability[.]” See Ex. 1 at 21, 22, 50. WSOU provides no evidence to 

contradict the fact that its patent will almost certainly be found invalid by the PTAB—simplifying 

this case out of existence. Instead, WSOU resorts to mischaracterizing the institution decision to 

create the false impression that the PTAB found certain claim limitations to be missing from the 

anticipatory prior art reference, Narayanan. See Opp. at 4. The PTAB’s actual statements—

confirming that all claim limitations are disclosed in Narayanan—are provided in the chart below.

WSOU Mischaracterization (Opp.) IPR Institution Decision (Ex. 1)

[M]ore specifically for claim limitation 

“[1.F]”, the institution decision admits that 

“Petitioner does not identify a disclosure in 

Narayanan explicitly stating that the 

aggregation switch enables a Spanning Tree 

Protocol on links between ports on edge or 

access switches to ports of the aggregation 

switch.” Opp. at 4.

In view of this disclosure, we are persuaded 

that for purposes of institution that Petitioner 

has demonstrated Narayanan discloses claim 

limitation 1[F]. Ex. 1 at 39-40 (emphasis 

added).

[T]he institution decision further 

acknowledges that “Petitioner does not cite 

an explicit disclosure of ‘receiving a 

command to operate in a stand-alone 

mode’.” Opp. at 4.

Although Petitioner does not cite an explicit 

disclosure of “receiving a command to operate 

in a stand-alone mode,” we are persuaded for 

purposes of this Decision that Petitioner has 

demonstrated a person of ordinary skill would 

reasonably understand or infer this feature 

from the subject matter disclosed in 

Narayanan. Ex. 1 at 43 (emphasis added).

Thus, for at least claims 1, 8, 15, 19, and 20, 

the institution decision itself acknowledges 

that Dell failed to disclose anything for at 

least one claim limitation in multiple claims. 

Opp. at 4.

For the reasons discussed above, we are 

persuaded that Petitioner has demonstrated a 

reasonable likelihood that it will succeed on 

the following challenges to patentability:

Claims 1–3, 5–9, 11–17, and 19–20 as 

anticipated by Narayanan;

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 8 of 12
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Claim 1–20 as obvious over Narayanan;

Claims 4, 10, and 18 as obvious over Narayanan 

and Mullooly; and

Claims 15–20 as obvious over Narayanan, 

Moberg, and Mullooly. Ex. 1 at 50 (emphasis 

added).

If the PTAB finds any claims invalid, this case will be simplified. See Lubrizol Specialty 

Prods., Inc. v. Baker Hughes Inc., 2017 WL 2255579, at *1 (S.D. Tex. May 23, 2017) (“If the 

PTAB ultimately determines that any of the patent claims are invalid or otherwise narrows the 

scope of any asserted patent claims, the proceedings in this Court will likely be resolved or 

simplified considerably.”). WSOU distracts from this simple fact with irrelevant and confusing

arguments about estoppel. See Opp. at 3-4. In seeking IPR institution, Defendants stipulated that 

they would not assert invalidity in this case on any grounds in their IPR petition. See D.I. 63. The 

IPR was instituted, and Defendants are now held to their stipulation. A stay pending IPR will have 

no effect on the system prior art defenses that Defendants are permitted to raise in this case, and 

the IPR will proceed regardless of whether a stay is ordered.

6

 By waiting to see which claims, if 

any, survive IPR, significant judicial and party resources can be conserved until it is known if this 

case needs to proceed to trial at all.

C. WSOU Mischaracterizes The Extent Of Discovery Conducted In This Case

WSOU mischaracterizes the extent resources have been expended, to date, on claim 

construction and discovery conducted in this case. Claim construction did not require the 

expenditure of significant resources and time. Opp. at 4. Fewer than 7 pages in total between both 

parties were dedicated to the ’489 patent across opening (D.I. 80 at 8-9), responsive (D.I. 83 at 16-

6 Once the FWD issues, Defendants will also be subject to statutory IPR estoppel under 35 U.S.C. 

§315(e)(2). Neither the stipulation nor statute apply to system prior art grounds of invalidity, 

which procedurally cannot be raised during IPR. See 35 U.S.C. § 311(b). 

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 9 of 12
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19), reply (D.I. 84 at 8-9), and sur-reply Markman briefing (D.I. 87 at 8-9), and the ’489 patent 

was not discussed at either Markman hearing. See D.I. 95, 108. The only claim term at issue was 

given its plain and ordinary meaning. D.I. 107 at 12. As WSOU acknowledges, third party 

discovery significantly overlaps with the other 11 cases. Discovery on third party assignee Nokia 

is common to all 12 cases. The only third party subpoena recipient unique to this case is 

prosecution counsel, but that subpoena has thus far been ignored and no discovery has actually 

taken place. And, while the parties exchanged some limited written discovery, WSOU has not 

produced any documents in this case since it served its preliminary infringement contentions 

almost a year ago in October 2020. No depositions have occurred, or have even been noticed or

scheduled. This means that very little discovery specific to this case has occurred thus far. Now 

is the opportune time to stay this case before document production, depositions, and expert 

discovery begin. 

CONCLUSION

For the reasons set forth above and in their opening brief, Defendants respectfully request 

that their motion to stay pending IPR of the ’489 patent be granted.

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 10 of 12
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Dated: September 1, 2021 By: Barry K. Shelton

Barry K. Shelton

Texas State Bar No. 24055029

bshelton@sheltoncoburn.com

SHELTON COBURN LLP

311 RR 620, Suite 205

Austin, TX 78734-4775 

Telephone: 512.263.2165

Facsimile: 512.263.2166 

Benjamin Hershkowitz

bhershkowitz@gibsondunn.com

Brian A. Rosenthal

brosenthal@gibsondunn.com 

Allen Kathir

akathir@gibsondunn.com

Kyanna Sabanoglu

ksabanoglu@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193 

Telephone: 212.351.4000

Facsimile: 212.351.4035 

Y. Ernest Hsin

ehsin@gibsondunn.com

Jaysen S. Chung

jschung@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

555 Mission Street, Suite 3000

San Francisco, CA 94105-0921

Telephone: 415.393.8200

Facsimile: 415.393.8306

Ryan K. Iwahashi

riwahashi@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1881 Page Mill Road

Palo Alto, CA 94304-1211

Telephone: 650.849.5300

Facsimile: 650.849.5333

Attorneys for Defendants

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 11 of 12
CERTIFICATE OF SERVICE

The undersigned certifies that on September 1, 2021, all counsel of record who are deemed 

to have consented to electronic service are being served with a copy of this document through the 

Court’s CM/ECF system under Local Rule CV-5(a). 

/s/ Barry K. Shelton

Barry K. Shelton 

Case 6:20-cv-00477-ADA Document 114 Filed 09/01/21 Page 12 of 12