WEST/301819810

IN THE UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC, 

Plaintiff, 

§ 

§ 

§

v. § 

§

Civil No. 6:20-cv-00507-ADA 

SAMSUNG ELECTRONICS CO. LTD, and 

SAMSUNG ELECTRONICS AMERICA, 

INC.,

§ 

§ 

§

JURY TRIAL DEMANDED 

Defendant. §

DEFENDANTS’ REPLY IN SUPPORT OF MOTION TO STAY CASE 

PENDING APPEAL OF INTER PARTES REVIEW FINAL WRITTEN DECISIONS

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In its Opposition, Neonode agrees with Samsung that the case would be simplified if it is 

stayed at least as to the ’993 patent, indicating that the most practical and efficient course of 

action is to stay this matter in its entirety. Dkt. No. 67 (“Opposition” or “Opp.”) at 8. As for the 

only other asserted patent, the ’879 patent, Neonode states no legitimate reason that it will be 

prejudiced by a further stay of these proceedings because there is none. Indeed, Neonode has 

already agreed to stay this case twice, undercutting any prejudice argument. Dkt. No. 66 

(“Motion” or “Mot.”) at 7. Neonode will not be prejudiced by a further stay of this case. 

Neonode is also wrong that significant discovery has taken place. Neonode admits that 

the parties have not engaged in claim construction, any general written discovery, or depositions 

of party witnesses given the Court’s previous stay of this case. Opp. at 6-8. Instead, the parties 

have only conducted limited foreign third-party discovery. This is far from significant 

discovery, especially given that fact discovery does not even open until June 2023. Mot. at 3. 

Neonode also agrees with Samsung that the most important factor in the Court’s stay 

analysis is the simplification of the issues. Opp. at 8. Here, because Neonode has suggested that 

the Court could stay the case as to the ’993 patent claims, further simplification could occur from 

a stay of this case pending the Federal Circuit’s review of the FWDs, especially given that the 

patents are closely related and the IPR proceedings involve overlapping prior art. Mot. at 5-6. 

I. The Simplification of Issues Warrants a Stay of This Case 

In agreeing that the simplification of issues factor is the most important in the Court’s 

analysis, Neonode has already admitted that the case would be simplified by a stay of at least the 

’993 patent infringement count. Neonode otherwise fails to refute that the case will likely further 

simplify following a stay in its entirety. 

First, Neonode acknowledges the benefit of avoiding wasted concurrent litigation 

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pending its appeal of the PTAB’s judgment on the ’993 patent and the value in the PTAB 

simplifying issues in this litigation. Opp. at 8-9. Neonode next argues that the possibility of the 

Federal Circuit reversing the PTAB’s ’879 patent decisions is too speculative to be given much 

weight. Id. at 9. However, Neonode glosses over important facts that increase the likelihood of 

reversal by the Federal Circuit. For example, there are two FWDs as to the ’879 patent that are 

likely subject to appeal, increasing the likelihood that at least one of the decisions of patentability 

will be reversed by the Federal Circuit. Further, here, the PTAB has already found the claims of 

the related ’993 patent unpatentable. Mot. at 1. Neonode does not contest the similarities of the 

’993 and ’879 patents. Id. at 5. Neonode’s citation to IOENGINE regarding the likelihood of 

Federal Circuit reversal is also misleading. Opp. at 10. In that case, disposition of the case 

required the reversal of two PTAB decisions on two separate patents. Here, in contrast, there are 

two PTAB decisions subject to reversal on the same patent. IOENGINE, LLC v. PayPal 

Holdings, Inc., No. CV 18-452-WCB, 2020 WL 6270776, at *1, *3 (D. Del. Oct. 26, 2020). 

Neonode also attempts to downplay the opportunity for guidance that may result from 

Federal Circuit review of claim construction issues regarding the appeal of the ’879 patent 

decisions. Opp. at 10. Neonode argued in both ’879 patent IPRs that the scope of the claim term 

“gliding” excluded a “drag” and a “flick,” but Neonode now argues that construction of the term 

is immaterial to “infringement, invalidity or any other issue in this case.” Id.; see also Mot. at 5-

6. Such a dispute on claim scope is certainly material to the present action, and Neonode has 

acknowledged through its IPR briefing that it is material to at least invalidity. 

A stay through the appeal of the ’879 patent decisions would allow for the full benefit of 

any Federal Circuit claim construction guidance at the outset of any claim construction briefing 

in this case—and would avoid inconsistent rulings—rather than belatedly considering such 

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guidance in jury instructions before trial as suggested by Neonode. Opp. at 10. To do otherwise 

would create inefficiencies that would otherwise be obtained after receiving a Federal Circuit 

opinion as to both patents. For example, Federal Circuit guidance on claim construction could 

be material to invalidity because if the Federal Circuit vacates the FWD in one or both of 

Samsung’s IPRs, Samsung would no longer be estopped from asserting the prior art it relied 

upon in its IPR petitions while awaiting a decision by the PTAB on remand. See, e.g., Gen. 

Access Sols., Ltd. v. Sprint Spectrum L.P., No. 2:20-CV-00007-RWS, 2020 WL 12572917, at *2 

(E.D. Tex. Dec. 1, 2020) (holding IPR estoppel attaches only to claims subject to Final Written 

Decision, not claims awaiting Final Written Decision on remand). The USPTO’s Standard 

Operating Procedure 9 states “[t]he Board has established a goal to issue decisions on remanded 

cases within six months of the Board’s receipt of the Federal Circuit’s mandate.” Ex. A, Patent 

Trial and Appeal Board, Standard Operating Procedure 9 (last visited Feb. 13, 2023). 

Therefore, if estimating that one or both of the’879 IPR decisions are vacated in the spring of 

2024, Samsung would not be estopped under 35 U.S.C. § 315(e) from using patent and printed 

publication invalidity defenses and would further consider those reference in light of any claim 

construction guidance from the Federal Circuit. If the case is not stayed, such a scenario would 

occur before trial in June 2024 and could greatly impact the case. If the case is stayed, however, 

the scenario is avoided and the parties can proceed in light of any Federal Circuit guidance. 

Finally, if the Court agrees with the parties that the case would be simplified by a stay of 

at least the ’993 patent count, then it follows that the most efficient procedure for both the Court 

and the parties is to stay the action in its entirety. For example, the Ren article prior art reference 

is at issue in both the ’879 and ’993 IPR proceedings. Dkt. 66-1, 66-2. A stay of only the ’993 

patent may therefore lead to inconsistent rulings between the Federal Circuit and the ’879 patent 

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in this case. Severing the case also creates the potential for Samsung to have to separately 

litigate two matters relating to the same claimed technology and same accused products, 

complicating the issues before the parties rather than simplifying them. See, e.g., Thompson v. 

Capstone Logistics, LLC, No. 4:15-CV-2464, 2018 WL 560407, at *6 (S.D. Tex. Jan. 25, 2018). 

Retaining a single action favors judicial economy as both claims involve common questions of 

law and fact, and trying the two patents in one action further avoids additional party expenses. 

The more efficient route is to stay the case in its entirety. Therefore, the most important factor—

simplification of issues—strongly favors stay, to which Neonode agrees at least in part.

II. The Early Stage of Proceedings Favors a Stay 

Neonode does not dispute that the case is in its infancy, acknowledging that no claim 

construction briefing has occurred. Opp. at 6. Indeed, (i) no claim construction briefing or 

Markman hearing has taken place; (ii) fact discovery has not commenced; (iii) neither initial 

disclosures nor written discovery has been exchanged; and (iv) no party depositions have taken 

place. Instead, Neonode clings to the fact that some foreign discovery has been taken and cites 

to a case that is inapposite. Id. at 6-7. The Sonrai case that Neonode cites in its Opposition did 

not concern foreign discovery—rather, this Court reasoned the case was “no longer in its early 

stages,” including because the Markman hearing had occurred and fact discovery closed in three 

months. Sonrai Memory Ltd. v. LG Elecs. Inc., No. 6:21-CV-00168-ADA, 2022 WL 2307475, 

at *3 (W.D. Tex. June 27, 2022). Neonode also cites to Realtime Data LLC as an alleged 

example supporting this factor. Opp. at 1. However, like Sonrai Memory Ltd., Realtime did not 

concern foreign discovery, and infringement and invalidity contentions had already been served. 

Realtime Data LLC v. Hewlett Packard Enter. Co., No. 6:16-CV-00086-RWS, 2018 WL 

3608544, at *3 (E.D. Tex. July 27, 2018). As such, this case law is inapposite. The early stage 

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of the proceedings favors stay. 

III. There Remains No Undue Prejudice to Neonode from a Stay 

Neonode states no legitimate reason that it will be prejudiced by a further stay of these 

proceedings because there is none. Neonode admits that it is a non-practicing entity that does 

not compete with Samsung. Opp. at 5. As stated in the case law in Samsung’s motion, this 

indicates that Neonode would not be unduly prejudiced by a further stay. Mot. at 8. Further, 

Neonode does not deny that it has not sought an injunction in this case, another factor weighing 

against any alleged undue prejudice to Neonode. Id. 

Moreover, Neonode’s previous agreements to stay this case on two occasions bely its 

argument now that a stay would “unquestionably materially impair” the enforcement of its patent 

rights, as it already agreed to stays resulting in pausing this matter for over two years. Id. at 7; 

Opp. at 3. Neonode cannot now credibly argue that an additional stay of approximately 13.5 

months (Mot. at 6 (citing Ex. D))—a period roughly half as long as the amount of time that 

Plaintiff has already agreed to stay this case—would now constitute undue prejudice, especially 

given the potential simplification of issues that would result from a stay. Mot. at 5-6. As such, 

Neonode’s claims that it has an interest in the “timely enforcement of its patent rights” despite its 

prior agreements ring hollow. Opp. at 3. Nor can Neonode claim surprise of the PTAB granting 

rehearing in IPR2021-00144 when the stipulation for the second stay explicitly contemplated the 

grant of the rehearing and stay through a FWD in that IPR, as Neonode notes. Id. at 4-5. This 

requested stay would not unduly prejudice Neonode. 

IV. Conclusion 

Samsung respectfully requests that this Court stay the case in its entirety pending 

resolution of the appeals of the FWDs in IPR2021-01041, IPR2021-00144, and IPR2021-00145. 

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Date: February 17, 2023 

 Respectfully submitted, 

By:

DLA PIPER LLP (US) 

/s/ John M. Guaragna 

John M. Guaragna 

Texas Bar No 24043308 

DLA PIPER LLP (US) 

303 Colorado Street, Suite 3000 

Austin, TX 78701-4653 

Tel: 512.457.7125 

Fax: 512.457.7001 

john.guaragna@dlapiper.com 

Mark D. Fowler (Pro hac vice) 

Bar No. 124235 

mark.fowler@dlapiper.com 

Erik Fuehrer (Pro hac vice) 

Bar No. 252578 

Erik.fuehrer@dlapiper.com 

DLA PIPER LLP (US) 

2000 University Avenue 

East Palo Alto, CA 94303-2214 

Tel: 650.833.2000 

Fax: 650.833.2001 

Tiffany Miller (Pro hac vice) 

Tiffany.miller@dlapiper.com 

DLA PIPER LLP (US) 

401 B Street, Suite 1700 

San Diego, CA 92101-4297 

Tel: 619.699.2700 

Fax: 619.699.2701 

Zachary Loney (Pro hac vice) 

DLA Piper LLP (US) 

303 Colorado St., Suite 3000 

Austin, TX 78701 

Tel: 512.457.7000 

Zachary.loney@us.dlapiper.com 

Benjamin Mueller (Pro hac vice) 

Benjamin.mueller@dlapiper.com 

DLA PIPER LLP (US) 

444 West Lake Street, Suite 900 

Chicago, IL 60606-0089 

Tel: 312.368.4000 

Fax: 312.236.7516 

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ATTORNEYS FOR SAMSUNG 

ELECTRONICS CO. LTD. and SAMSUNG 

ELECTRONICS AMERICA, INC.

CERTIFICATE OF SERVICE 

The undersigned certifies that a true and correct copy of the above document was served 

on February 17, 2023 to all counsel of record via ECF. 

/s/ John M. Guaragna 

JOHN M. GUARAGNA 

Case 6:20-cv-00507-ADA Document 68 Filed 02/17/23 Page 8 of 8