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. 

ZTE CORPORATION,

 Defendant. 

§

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§

C.A. NO. 6:20-cv-00487-ADA

C.A. NO. 6:20-cv-00488-ADA

C.A. NO. 6:20-cv-00489-ADA

C.A. NO. 6:20-cv-00490-ADA

C.A. NO. 6:20-cv-00491-ADA

C.A. NO. 6:20-cv-00492-ADA

C.A. NO. 6:20-cv-00493-ADA

C.A. NO. 6:20-cv-00494-ADA

C.A. NO. 6:20-cv-00495-ADA

C.A. NO. 6:20-cv-00496-ADA

C.A. NO. 6:20-cv-00497-ADA

JURY TRIAL DEMANDED

ZTE CORPORATION’S MOTION TO STAY PENDING RESOLUTION OF INTER 

PARTES REVIEW AND/OR EX PARTE REEXAMINATION OF THE ASSERTED 

PATENTS

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TABLE OF CONTENTS

I. INTRODUCTION: A STAY IS APPROPRIATE TO MINIMIZE WASTED 

PARTY RESOURCES GIVEN GRANTED POST-GRANT PROCEEDINGS ............... 1

II. BACKGROUND: PROGRESS OF POST-GRANT PROCEEDINGS SUPPORT 

STAY.................................................................................................................................. 2

A. Fact Discovery Has Been Extended Numerous Times Already ............................. 2

B. The USPTO, Through IPRs and EPRs, Initiated Review of All Claims 

WSOU Asserts Against ZTE .................................................................................. 2

III. LEGAL STANDARD......................................................................................................... 4

IV. ARGUMENT: ALL CASE ACTIVITY SHOULD BE STAYED PENDING 

RESOLUTION OF GRANTED POST-GRANT PROCEEDINGS ANALYZING 

VALIDITY OF ALL ASSERTED CLAIMS ..................................................................... 5

A. Factor 1 Favors Stay: A Stay Will Not Unduly Prejudice WSOU ......................... 5

B. Factor 2 Also Favors a Stay: A Considerable Amount of Fact Discovery 

By Both Parties Remains Incomplete ..................................................................... 6

C. Factor 3 Likewise Favors a Stay: A Stay Will Drastically Simplify Or 

Eliminate Issues In All Eleven Cases ..................................................................... 8

V. CONCLUSION: STAY IS NECESSARY TO PREVENT WASTING 

RESOURCES ................................................................................................................... 10

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TABLE OF AUTHORITIES

Cases

Clinton v. Jones, 520 U.S. 681, 706 (1997).................................................................................... 4

Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. A-13-CA-800-SS, 2015 WL 3773014, at 

*2 (W.D. Tex. June 16, 2015)............................................................................................... 5, 9

Evolutionary Intelligence, LLC v. Facebook, Inc., No. C 13-4202 SI, 2014 WL 261837, 

at *3 (N.D. Cal. Jan. 23, 2014) ................................................................................................. 5

e-Watch, Inc. v. ACTi Corp., Inc., No. SA-12-CA-695-FB, 2013 WL 6334372 at *9 

(W.D. Tex. Aug. 9, 2013)......................................................................................................... 6

Gesture Tech. Partners, LLC v. Apple Inc., No. 6-21-cv-00121-ADA (W.D. Tex. Dec. 

29, 2021) ................................................................................................................................... 5

Kirsch Rsch. & Dev., LLC v. Tarco Specialty Prod., Inc., No. 6:20-cv-00318-ADA, 2021 

WL 4555804 (W.D. Tex. Oct. 4, 2021)........................................................................ 4, 5, 8, 9

TC Tech. LLC v. T-Mobile USA, Inc., 2021 WL 8083373 (W.D. Tex. Dec. 7, 2021) ........... 4, 5, 8

Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2014 WL 121640 at *3 (N.D. Cal. July 

28, 2011) ................................................................................................................................... 5

Evolutionary Intelligence, LLC v. Samsung, Inc., No. C 13-04302 WHA, 2014 WL 93954 

at *3 (N.D. Cal. Jan. 9, 2014) ................................................................................................. 10

NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. 

Tex. 2015)............................................................................................................................... 10

Statutes

35 U.S.C. § 315(e)(2)...................................................................................................................... 9

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TABLE OF EXHIBITS

Exhibit Document

1 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-487, Complaint, Dkt. 1 

2 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-488, Complaint, Dkt. 1

3 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-489, Complaint, Dkt. 1 

4 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-490, Complaint, Dkt. 1 

5 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-491, Complaint, Dkt. 1 

6 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-492, Complaint, Dkt. 1 

7 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-493, Complaint, Dkt. 1 

8 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-494, Complaint, Dkt. 1 

9 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-495, Complaint, Dkt. 1 

10 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-496, Complaint, Dkt. 1 

11 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-497, Complaint, Dkt. 1 

12 This portion intentionally left blank

13 WSOU Investments, LLC. d/b/a Brazos Licensing and Development v. ZTE 

Corporation, 6:20-cv-487-ADA, Order Granting Motion to Extend 

Scheduling Order Deadlines, Dkt. 160 

14 IPR2021-00698

15 IPR2021-00695

16 IPR2021-00696

17 IPR2021-00699

18 Order of Reexamination ’905 Patent

19 Order of Reexamination ’839 Patent

20 Order of Reexamination ’240 Patent

21 Order of Reexamination ’036 Patent

22 Order of Reexamination ’929 Patent

23 Order of Reexamination ’232 Patent

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24 Order of Reexamination ’060 Patent

25 ZTE Request for Reexamination ’505 Patent

26 ZTE Request for Reexamination ’534 Patent

27 Ravgen, Inc. v. Natera, Inc. et al., Case No. 1:20-cv-692-LY (W.D. Tex. 

May 31, 2022) Dkt. 247

28 WSOU Investments LLC v. Arista Networks, Inc., Case No. 4:21-cv-08679-

JSW, Dkt. 104

29 WSOU Investments LLC v. Arista Networks, Inc., Case No. 4:21-cv-08679-

JSW, Dkt. 1

30 The Resurgence and Perils of Ex Parte Reexaminations_Sterne Kessler

31 AIA Trial Statistics Sep 2021

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I. INTRODUCTION: A STAY IS APPROPRIATE TO MINIMIZE WASTED PARTY 

RESOURCES GIVEN GRANTED POST-GRANT PROCEEDINGS

As of August 4, 2022, all eleven of the asserted patents are undergoing review by either 

the Patent Trial and Appeal Board (“PTAB”) and/or the United States Patent and Trademark Office 

(“USPTO”). Pursuant to the Court’s inherent authority to control its docket, ZTE Corporation 

(“ZTE”) moves to stay the eleven suits filed by WSOU Investments LLC d/b/a Brazos Licensing 

and Development (“WSOU”) to conserve the Court’s and parties’ resources. Both parties would 

waste countless resources if required to continue fact and expert discovery, summary judgment, 

pre-trial and trial for claims that will likely be invalidated and/or found unpatentable.

A stay here would drastically reduce judicial and party resources (a goal the Court shares).

WSOU does not share this goal, however, as it failed to engage in discussions altogether here for 

an overall stay of these eleven cases. Instead, WSOU only engaged in extension discussions here—

the parties are negotiating extending the close of expert discovery to February-March of 2023. Yet 

in the sister Arista case, which had a similar April 2023 close of expert discovery date, WSOU 

agreed to stay that case pending the outcome of its respective post-grant proceedings. Over 100 

claims across eleven patents remain in these cases necessitating at least three trials separated by 

three months, and every claim of every asserted patent is under post-grant review. It is highly likely 

that these post-grant proceedings will alter the scope, or even validity, of these asserted claims.

All relevant factors weigh in favor of a stay. First, a stay will not unduly prejudice WSOU. 

WSOU is a non-practicing entity and seeks only monetary damages; WSOU can be fully 

compensated in spite of any delay. And a stay here equally benefits all parties as it reduces 

technical issues at the heart of dispute. Second, although these cases persisted for some time, a 

considerable amount of fact discovery remains unaddressed. The expenditure of substantial party 

resources, including international travel costs for Defendant’s witnesses’ depositions (which, by 

Case 6:20-cv-00487-ADA-DTG Document 244 Filed 08/25/22 Page 6 of 16
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Chinese law, must occur outside of China), could potentially be avoided by grant of a stay. Third, 

100% of the claims asserted by WSOU are under review by the PTAB and/or the USPTO. The 

grant of a stay would drastically simplify, if not completely resolve, all eleven cases (and reduce 

the risk of costly and dangerous travel).

II. BACKGROUND: PROGRESS OF POST-GRANT PROCEEDINGS SUPPORT 

STAY

A. Fact Discovery Has Been Extended Numerous Times Already

WSOU filed its Complaint in all eleven cases against ZTE on June 3, 2020, asserting 

infringement of one patent in each case. See Exs. 1-11. In a July 5, 2022 Order, this Court extended 

the close of fact discovery from June 17, 2022 to July 1, 2022. See WSOU Investments, LLC. d/b/a 

Brazos Licensing and Development v. ZTE Corporation, 6:20-cv-487, Dkt. 232. Although the 

Court has yet to enter the order, the close of fact discovery was extended to August 1, 2022. See

id.; Dkt. 233 at p. 26. Additionally, the parties further agreed to extend fact discovery to at least 

November 1, 2022 and remain in discussions. 

The parties have yet to complete fact discovery—and the parties agree to push opening 

expert reports until at least December 21, 2022 for some cases. None of the three trials have been 

officially set, and based on party negotiations, the trials will likely be delayed until possibly the

fall of 2023. A denial of a stay now will unduly necessitate significant work and great expenditure 

of resources by both parties. However, the jury selection and trial dates will certainly be delayed 

as a result of the extended—and continued extensions to fact discovery. See Ex. 13, p. 2.

B. The USPTO, Through IPRs and EPRs, Initiated Review of All Claims 

WSOU Asserts Against ZTE

The PTAB has instituted Inter Partes Review on all claims of four of the asserted patents. 

On March 21, 2021, ZTE petitioned for IPR on all claims of the ’505 patent and the petition was 

instituted on October 18, 2021. See Ex. 14. On March 26, 2021, ZTE petitioned for IPR on all 

Case 6:20-cv-00487-ADA-DTG Document 244 Filed 08/25/22 Page 7 of 16
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claims of the ’960 patent (instituted October 18, 2021), and the ’071 patent (instituted September 

27, 2021). See Exs. 15-16. On March 31, 2021, ZTE petitioned for IPR of all claims of the ’534

patent and the petition was instituted October 18, 2021. See Ex. 17. The first of the Final Written 

Decisions is expected by the statutory deadline of September 27, 2022.

Of the remaining seven asserted patents, ZTE requested—and the USPTO granted—EPR 

on all claims of those patents. On May 9, 2022, the USPTO granted EPR on all claims of the ’905 

patent. See Ex. 18. On May 13, 2022, the USPTO granted EPR on all claims of the ’839 patent. 

See Ex. 19. On May 26, 2022, the USPTO granted EPR on all claims of the ’240 patent. See Ex. 

20. On June 1, 2022, the USPTO granted EPR on all claims of the ’036 patent. See Ex. 21. On 

June 24, 2022, the USPTO granted EPR on all claims of the ’929 patent. See Ex. 22. On June 29, 

2022, the USPTO granted EPR on all claims of the ’232 patent. See Ex. 23. On July 12, 2022, the 

USPTO granted EPR on all claims of the ’060 patent. See Ex. 24. 

ZTE also filed a request for EPR on all claims of two patents which are pending IPR, the 

’505 patent and the ’534 patent. The aforementioned requests were filed on July 29, 2022 and 

August 4, 2022, respectively. See Exs 24-25. A chart summarizing the status of each asserted 

patent undergoing IPR and/or EPR is below:

Asserted 

Patent Status

Case No./Reexamination 

Application No.

Deadline for 

Final Written 

Decision

7,742,534

Inter partes review instituted on all 

claims by the PTAB IPR2021-00699 October 18, 2022

Request for ex parte reexamination on 

all claims filed August 4, 2022 90/019,106 N/A

7,203,505

Inter partes review instituted on all 

claims by the PTAB IPR2021-00698 October 18, 2022

Request for ex parte reexamination on 

all claims filed July 29, 2022 09/941,851 N/A

8,179,960 Inter partes review instituted on all 

claims by the PTAB IPR2021-00696 October 18, 2022

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8,147,071 Inter partes review instituted on all 

claims by the PTAB IPR2021-00695 September 27, 2022

7,487,240

Ex parte reexamination granted on all 

claims by the USPTO on June 28, 

2022

90/019,083 N/A

8,451,839

Ex parte reexamination granted on all 

claims by the USPTO on June 28, 

2022

90/019,078 N/A

8,730,905

Ex parte reexamination granted on all 

claims by the USPTO on July 13, 

2022

90/019,077 N/A

9,185,036 Ex parte reexamination granted on all 

claims by the USPTO on July 1, 2022 90/019,086 N/A

9,258,232

Ex parte reexamination granted on all 

claims by the USPTO on July 29, 

2022

90/019,094 N/A

9,294,060

Ex parte reexamination granted on all 

claims by the USPTO on July 12, 

2022

90/015,031 N/A

7,489,929

Ex parte reexamination granted on all 

claims by the USPTO on June 24, 

2022

90/015,029 N/A

III. LEGAL STANDARD

A district court has the inherent power to control its own docket, including the power to 

stay proceedings before it. Clinton v. Jones, 520 U.S. 681, 706 (1997) (“The District Court has 

broad discretion to stay proceedings as an incident to its power to control its own docket.”). “In 

particular, the question of whether to stay proceedings pending inter partes review of a patent is a 

matter committed to the district court’s discretion.” Kirsch Rsch. & Dev., LLC v. Tarco Specialty 

Prod., Inc., No. 6:20-cv-00318-ADA, 2021 WL 4555804, at *1 (W.D. Tex. Oct. 4, 2021) (internal 

quotation marks omitted). Furthermore, a stay is particularly justified when “the outcome of a PTO 

proceeding is likely to assist the court in determining patent validity or eliminate the need to try 

infringement issues.” Id. (internal quotation marks omitted).

Courts in this district typically consider three factors to determine whether to stay a case 

pending post-grant proceedings: (1) “whether the stay will unduly prejudice the nonmoving party;” 

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(2) “whether the proceedings before the court have reached an advanced stage, including whether 

discovery is complete and a trial date has been set;” and (3) “whether the stay will likely result in 

simplifying the case before the court.” Id. at *2 (internal quotation marks omitted); see also TC 

Tech. LLC v. T-Mobile USA, Inc., 2021 WL 8083373, at *2 (W.D. Tex. Dec. 7, 2021). “Essentially, 

courts determine whether the benefits of a stay outweigh the inherent costs based on these factors.” 

Kirsch, 2021 WL 4555804, at *2 (internal quotation marks omitted).

IV. ARGUMENT: ALL CASE ACTIVITY SHOULD BE STAYED PENDING 

RESOLUTION OF GRANTED POST-GRANT PROCEEDINGS ANALYZING 

VALIDITY OF ALL ASSERTED CLAIMS

A. Factor 1 Favors Stay: A Stay Will Not Unduly Prejudice WSOU

The first factor, whether the stay will unduly prejudice the nonmoving party, favors a stay 

here because granting a stay will not prejudice WSOU (in fact it will help WSOU by reducing 

resources directly related to opening expert reports). “[T]he weight of Plaintiff’s interest in timely 

enforcement is diminished here where a stay would merely delay Plaintiff’s potential monetary 

recovery.” Id.; see also Gesture Tech. Partners, LLC v. Apple Inc., No. 6-21-cv-00121-ADA 

(W.D. Tex. Dec. 29, 2021) (granting stay where plaintiff requested only monetary damages). And 

although this factor may weigh against a stay “where the parties are direct competitors,” that is not 

the case here as WSOU is a non-practicing entity that does not make or sell products that compete 

with ZTE (or anyone else). Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2014 WL 121640 at 

*3 (N.D. Cal. July 28, 2011). As a result, monetary damages would adequately compensate WSOU 

for any alleged infringement and any purported prejudice arising from a stay.

Other courts similarly found that delaying potential monetary relief is not unduly 

prejudicial. Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. A-13-CA-800-SS, 2015 WL 3773014, 

at *2 (W.D. Tex. June 16, 2015) (“mere delay in collecting [monetary] damages does not constitute 

undue prejudice.”); Evolutionary Intelligence, LLC v. Facebook, Inc., No. C 13-4202 SI, 2014 WL 

Case 6:20-cv-00487-ADA-DTG Document 244 Filed 08/25/22 Page 10 of 16
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261837, at *3 (N.D. Cal. Jan. 23, 2014) (“[c]ourts have consistently found that a patent licensor 

cannot be prejudiced by a stay because monetary damages provide adequate redress for 

infringement”). Under similar circumstances, courts regularly find no undue prejudice and granted 

motions to stay pending IPR and/or EPR proceedings. See Ex. 27, pp. 2-3 (“The court agrees with 

Defendants that a stay pending review at the USPTO would not present a significant delay”).

WSOU’s own conduct in related cases demonstrates that a stay would not unduly prejudice 

WSOU. Recently, on July 1, 2022, WSOU entered a joint stipulation with Arista Networks, Inc. 

(“Arista”)—and the court granted—a stay of the proceedings pending the resolution of an IPR 

filed by Arista. See Ex. 28. In that case, before this Court transferred it to the Northern District of 

California, WSOU originally filed suit against Arista here in the Western District of Texas less 

than five months after WSOU filed the complaints against ZTE in the cases at hand. See Ex. 29 

id., Dkt. 1. Yet, due to WSOU’s delay of six months of venue discovery here, in many ways the 

Arista case is procedurally more advanced than the cases here—and WSOU still agreed to stay—

thus it is inappropriate for WSOU to engage in such conduct in the Arista case yet oppose a stay 

here as allegedly unduly prejudicial.

Further, mere delay associated with EPR or IPR proceedings, without more, does not 

justify denying a stay. See e-Watch, Inc. v. ACTi Corp., Inc., No. SA-12-CA-695-FB, 2013 WL 

6334372 at *9 (W.D. Tex. Aug. 9, 2013). In fact, a stay will also aid WSOU by saving party 

resources once the USPTO issues final written decisions for either the EPRs or the IPRs. Therefore, 

this factor weighs in favor of a stay.

B. Factor 2 Also Favors a Stay: A Considerable Amount of Fact Discovery By 

Both Parties Remains Incomplete

The second factor regarding whether the proceedings before the court have reached an 

advanced stage also favors a stay (because the cases are not advanced)—fact discovery remains 

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open and the Court has yet to set schedule any of the three trials for these cases (with at least three 

months between each trial). Although the proceedings in the instant cases have advanced for two 

years (a least six months were for venue discovery), a considerable amount of fact discovery 

remains incomplete. Fact discovery has encountered many setbacks unique to these cases—

including WSOU’s withholding of discovery. Dkt. 235, pp. 20-25. These setbacks borne from 

WSOU’s misdeeds have forced delays to the close of fact discovery, thereby further delaying the 

respective three trial dates.

Notably, only one witness was deposed here (and another deposition of that witness is 

required) and at least eight more depositions remain across the parties. The depositions of ZTE’s 

six Chinese witnesses which, under Chinese law, must occur outside of mainland China require an 

extraordinary amount of resources and time spent away from their regular corporate operations

and this burden is further complicated by the resurgence of COVID-19 severe travel restrictions.

Absent a stay, the parties will expend substantial resources pursuing fact and expert 

discovery, dispositive motions, pre-trial motions and submissions, trial preparation, and trials for 

claims that the PTAB will likely invalidate and/or the USPTO will find unpatentable. More 

importantly, the Court is likely to invest substantial time and resources on hearings and discovery 

disputes (e.g., discovery motions, dispositive motions, motions in limine, Daubert motions), and 

potentially pre-trial conferences and trials. Given the high likelihood that the IPR and EPR 

proceedings will impact the asserted claims, a stay is justified to avoid the needless waste of 

judicial and party resources. And proceeding with the merits of these cases will impinge the “waste 

of time, energy and money” that the Federal Circuit cautioned against, in In re EMC Corp. 501 

Fed. Appx. 973, 975-76 (Fed. Cir. 2013).

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Although the Court held a Markman hearing on March 3, 2022, the Court has granted stays 

in light of IPRs when a motion to stay was filed after the Markman hearing and no depositions had 

been taken. See, e.g., Kirsch, 2021 WL 4555804 at *1-2 (“The parties have only begun written 

discovery and no deposition have been taken.” This factor favors denying a stay.”) (internal 

citations omitted). Here, written discovery is still ongoing and only one deposition has been taken

(which requires supplemental deposing). Therefore, this factor weighs in favor of a stay.

C. Factor 3 Likewise Favors a Stay: A Stay Will Drastically Simplify Or 

Eliminate Issues In All Eleven Cases

The most important factor to the Court in deciding whether to grant a stay is the prospect 

that the IPR and/or EPR proceedings will result in simplification of issues before the Court. See 

id. at *3, see also TC Tech. LLC v. T-Mobile USA, Inc., Case No. 6-20-CV-00899-ADA, 2021 WL 

8083373 (W.D. Tex. Dec. 7, 2021). Here, where every asserted claim of all eleven asserted patents 

is under review, a stay will drastically simplify the issues and possibly even eliminate trial, thereby 

reducing the burden on the Court and the parties.

Recent studies show that stays as requested here are likely to simplify the issues. In 

approximately 80% of granted EPRs, the challenged claims are invalidated or amended. See Ex. 

30. Between the ’240 patent (11 claims), the ’839 patent (9 claims), the ’905 patent (26 claims), 

the ’036 patent (18 claims), the ’232 patent (2 claims), the ’060 patent (2 claims), and the ’929 

patent (15 claims), despite already narrowing the number of asserted claims, 68 asserted claims 

remain (with nearly 70 additional claims) that are all subject to EPR. Assuming the statistical 

averages reported in the recent study apply, approximately 55 of those asserted claims undergoing 

EPR will be either invalidated or amended (also marginalizing the claim construction order).

Another USPTO study shows that, from October 2020 through September 2021, nearly 

half instituted claims were found to be unpatentable by a preponderance of the evidence in an IPR 

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Final Written Decision. See Ex. 31, p. 14. Between the ’534 patent (12 claims), the ’505 patent (4

claims), the ’071 patent (3 claims), the ’960 (4 claims), there remain 23 asserted claims (with 

nearly 80 additional claims) that are all subject to instituted IPRs—where several claims are likely 

to be invalidated as well. Thus, a stay which allows for resolution of the pending IPR and EPR 

proceedings could simplify the instant cases by an order of magnitudes, if not completely resolve 

all eleven cases.

Importantly, even if the PTAB does not ultimately invalidate some or all of the challenged 

claims, the issues in these cases will still be significantly simplified because ZTE will be estopped 

from arguing that the challenged claims are “invalid on any ground that [ZTE] raised or reasonably 

could have raised during [the] inter partes review.” 35 U.S.C. § 315(e)(2). Thus, regardless of the 

outcome of the IPR proceedings, the scope of the parties’ dispute in these cases will be narrowed. 

Not granting the stay, on the other hand, would further complicate the issues in this case. 

With the pending IPR and EPR proceedings, “[p]roceeding to trial could [] prove to be 

extraordinarily wasteful of both the parties’ resources and the Court’s resources.” Crossroads Sys., 

2015 WL 3773014, at *3; see Kirsch, 2021 WL 4555610, at *3 (“The Court finds that, given the 

number of grounds that PTAB instituted IPR upon, there is a good chance the PTAB will invalidate 

the ... patent, rendering continued litigation of this case wasteful.”). There is minimal value in 

litigating invalidity here while the same issues are before the PTAB and USPTO.

Staying this litigation safeguards judicial resources while providing the Court and parties 

with “the benefit of the expert agency’s full and focused consideration of the effect of prior art on 

patents being asserted in litigation.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 

2015 WL 1069111, at *4 (E.D. Tex. Mar. 11, 2015); Evolutionary Intelligence, LLC v. Samsung, 

Inc., No. C 13-04302 WHA, 2014 WL 93954 at *3 (N.D. Cal. Jan. 9, 2014) (IPR record may also 

Case 6:20-cv-00487-ADA-DTG Document 244 Filed 08/25/22 Page 14 of 16
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“raise estoppel issues, and encourage settlement”). The Court should stay these cases and prevent 

the parties from unnecessarily expending further valuable resources, while the PTAB and USPTO 

complete their respective review in the pending IPR and EPR proceedings. This factor, the most 

important one, weighs in favor of a stay.

V. CONCLUSION: STAY IS NECESSARY TO PREVENT WASTING RESOURCES

For the foregoing reasons, ZTE respectfully requests that the Court stay this case pending 

final resolution of the IPR proceedings and/or the EPR proceedings for the asserted patents.

DATED: August 25, 2022 Respectfully submitted,

/s/Lionel M. Lavenue 

Lionel M. Lavenue 

Virginia Bar No. 49,005 

lionel.lavenue@finnegan.com 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER, LLP

1875 Explorer Street, Suite 800 

Reston, VA 20190 

Phone: (571) 203-2700 

 Fax: (202) 408-4400 

Attorney for Defendant, 

ZTE Corporation 

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CERTIFICATE OF CONFERENCE

The parties complied with Local Rule CV-7(i). On August 24, 2022, Defendants’ counsel 

conferred with Plaintiff’s counsel via telephone, and on Plaintiff’s counsel confirmed that Plaintiff 

opposes the stay relief sought in this motion. 

 /s/Lionel M. Lavenue 

 Lionel M. Lavenue 

CERTIFICATE OF SERVICE

 The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system on August 25, 2022. 

/s/Lionel M. Lavenue 

 Lionel M. Lavenue 

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