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.

§

§

§

§

§

§

§

§

§

§

§

§

CIVIL ACTION 6:20-CV-00477-ADA

PATENT CASE

JURY TRIAL DEMANDED

RESPONSE OPPOSING DEFENDANTS’ MOTION TO STAY 

PENDING INTER PARTES REVIEW

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 1 of 7
1

This Court has always denied motions like Dell’s that seek a stay pending inter partes

review. Dell’s motion is no more compelling than those the Court has denied. As an initial matter, 

the motion should be stricken because Dell did not give notice of its anticipated motion or bother 

to confer before filing the motion. Regardless, the motion should be denied because a stay will not 

simplify the issues, the stage of proceedings disfavors a stay (particularly given the massive multicountry international campaign of foreign discovery Dell forced the parties to engage in before 

Markman), and WSOU will be unduly prejudiced if a stay is granted. 

I. Background

There can be no dispute that both parties have already expended considerable time and 

resources into the claim construction process. In fact, the Court has already conducted a Markman 

hearing and issued a claim construction order. Further, the parties have expended considerable 

time and resources conducting discovery, in large part because Dell insisted on early foreign 

discovery. Over WSOU’s objections, Dell engaged in a massive foreign discovery campaign 

before the Markman hearing and before discovery opened. Dell’s foreign discovery campaign used 

up significant party, non-party, and Court resources, forcing WSOU to obtain local counsel for 

discovery disputes in numerous foreign jurisdictions well before discovery opened. This Court 

held several pre-Markman discovery hearings because of Dell’s campaign. Dell pursued discovery 

with equal vigor the moment discovery opened in the United States, serving dozens of subpoenas 

through this Court’s ECF system. Dell hid this massive multi-country international discovery 

campaign from the PTAB and managed to convince the PTAB that discovery was only in its early 

stages. This Court knows better.

Trial is set for May 12, 2022, at which time this Court will adjudicate infringement and 

invalidity. The PTAB’s final written decision is due, without any extension, approximately July 

1, 2022. 

II. Legal Standard

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

stay proceedings before it.” Multimedia Content Mgmt. Llc v. Dish Network, No. 6:18-CV-00207-

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 2 of 7
2

ADA, 2019 U.S. Dist. LEXIS 236670, at *2-4 (W.D. Tex. May 30, 2019) (Albright, J.). In

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

matter committed to the district court’s discretion.” Id. at *2-4. “The party seeking a stay bears the 

burden of showing that a stay is appropriate.” Mimedx Grp., Inc. v. Tissue Transplant Tech., Ltd., 

No. SA-14-CA-719, 2015 U.S. Dist. LEXIS 33388, at *4 (W.D. Tex. Jan. 5, 2015). A patent holder 

has “an interest in the timely enforcement of its patent right.” Id. (internal quotation marks and 

citation omitted). “[T]here is no per se rule that patent cases should be stayed pending PTO 

proceedings, because such a rule ‘would invite parties to unilaterally derail litigation.’” Realtime 

Data, LLC v. Rackspace US, Inc., No. 6:16-CV-00961 RWS-JDL, 2017 U.S. Dist. LEXIS 27421, 

at *6 (E.D. Tex. Feb. 27, 2017) (internal quotation marks and citation omitted). “District courts 

typically consider three factors when determining whether to grant a stay pending inter partes 

review of a patent in suit: (1) whether the stay will unduly prejudice the nonmoving party, (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.” NFC Techs. LLC v. HTC Am., Inc., No. 2:13-CV-1058-

WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015).

III. Argument

A. A stay will not simplify the case. 

In considering whether to grant a stay pending inter partes review, “the most important

factor bearing on whether to grant a stay in this case is the prospect that the inter partes review

proceeding will result in simplification of the issues before the Court.” NFC Techs. LLC v. HTC

Am., Inc., No. 2:13-CV-1058-WCB, 2015 U.S. Dist. LEXIS 29573, at *12 (E.D. Tex. Mar. 11,

2015) (Bryson, J.).

A stay will not simplify the issues in this case for multiple reasons, including: (1) the Court 

has already resolved the meaning of claim terms as a matter of law; (2) trial in this case is scheduled 

to occur before any final written decision; (3) Defendants will only be estopped from presenting 

the grounds included in the inter partes review or on any grounds involving the same references 

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 3 of 7
3

in the inter partes review “alone or in combination with any other patent or printed publication”

(Dkt. 63, at 1), which leaves open merely “combining” any ground in the inter partes review with 

an alleged prior art “system”; and (4) Defendants have not shown that all claims of the ’489 patent 

will be found unpatentable. 

A stay would not estop Defendants from challenging the validity of the asserted claims on 

grounds other than those raised in the review. Defendants do not even acknowledge that some (or 

all) claims may survive the IPR. And in that event, despite the fact that Defendants filed a 

purported “stipulation of invalidity contentions” (Dkt. 63), Defendants fail to acknowledge that its 

so-called stipulation may not simplify the issues at all because Defendants, through its so-called 

“stipulation” have given themselves considerable latitude in using prior art systems embodying, 

or merely in combination with, the same patents or printed publications before the PTO in the IPR 

proceedings. Specifically, Defendants stipulated that “Defendants will not assert invalidity of 

claims 1–20 of the ’489 patent in this case based on any of the four grounds [in the IPR], or on any 

other grounds involving the Narayanan, Smith, Chin, Mullooly, and Moberg references alone or 

in combination with any other patent or printed publication.” Dkt. 63 at 1 (emphasis added). 

And to drive home the point that Defendants are not stipulating to be estopped from relying those 

exact same grounds and references, Defendants further stated that: “This stipulation is not intended 

and should not be construed to limit Defendants’ ability to assert invalidity of the claims of the 

’489 patent based on prior art not consisting of patents or printed publications, alone or in 

combination with any other reference whatsoever.” Dkt. 63 at 1-2 (emphasis added). 

Defendants’ intention to assert the same grounds with the same references as in the IPR (i.e. “alone 

or in combination with any other reference whatsoever”), in combination with alleged prior art 

systems (“prior art not consisting of patents or printed publications”) is not a hypothetical. As seen 

in Defendants’ invalidity contentions served on June 25, 2021, for the ’489 patent, Defendants 

expressly assert no less than nine (9) “prior art systems”. Ex. A at 43-44. Thus, Defendants have 

intentionally and purposefully provided a “stipulation” that in actuality gives Defendants a large 

loophole and considerable latitude in using prior art systems. See also Intellectual Ventures II LLC 

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 4 of 7
4

v. Kemper Corp., No. 6:16-cv-0081, 2016 U.S. Dist. LEXIS 181431, at *8 (E.D. Tex. Nov. 7, 

2016). As a result, if anything, staying the case will only increase the number of references on 

which Defendants argues.

Further, Defendants have not shown that all of the challenged claims will be found 

unpatentable. Defendants’ proclamation that “after the IPR there will be nothing left to litigate” 

appears to rely on a single sentence from the institution decision. Mot. 4-5. However, the institution 

decision is not as dispositive as Defendants might hope. For example, in the institution decision 

(Mot., Ex. 1), under the section for alleged “Anticipation of Claims 1–3, 5–9, 11–15, 19, 20 by 

Narayanan” (Mot. Ex. 1, at 29), and regarding “Claims 1, 8” (Id. at 33), and more 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.” Id.

at 39. Similarly, still in the section of alleged “anticipation” of challenged claims, for “Claims 15 

and 19-20,” the institution decision further acknowledges that “Petitioner does not cite an explicit 

disclosure of ‘receiving a command to operate in a stand-alone mode’.” Id., at 43. 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. 

B. The stage of proceedings disfavors a stay.

The stage of the proceedings strongly disfavors a stay. If “the court has expended 

significant resources, then courts have found this factor weighs against a stay.” CANVS Corp. v. 

U.S., 118 Fed. Cl. 587, 595-96 (2014) (quote omitted). As explained above, this Court has invested 

significant resources and time in construing the contested claim terms. Further, because of Dell’s 

massive multi-country international pre-Markman foreign discovery campaign, this Court has 

already held several discovery hearings. 

Entering a stay now, after Dell has already subjected and burdened this Court, WSOU, and 

multiple third parties around the world to the burden of Dell’s massive foreign discovery campaign 

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 5 of 7
5

will not “eliminate or lessen the burden on any third parties,” as Dell argues. The damage is already 

done. Further, Dell abandoned most of its foreign discovery once discovery opened in the United 

States, formally withdrawing most of its letters of requests (after WSOU and third parties around 

the world expended significant resources on them). Given that Dell has finally abandoned its 

misguided foreign discovery campaign, a stay will have little effect. Further, Dell is unlikely to 

withdraw or stay most of its ongoing third-party discovery merely because this one case is stayed. 

Much of Dell’s remaining foreign and third-party discovery involves Nokia, discovery that will 

not be resolved by a stay of only one of WSOU’s pending cases against Dell. In other words, 

staying this case will simplify nothing. Dell will continue in its course of conduct in the other 

pending cases.

C. A stay at this stage of the proceedings would unduly prejudice WSOU.

As a patent holder, WSOU has an “interest in the timely enforcement of its patent right.” 

MiMedx Group, Inc. v. Tissue Transplant Tech. Ltd., 2015 WL 11573771, at *2 (W.D. Tex. Jan. 

5, 2015) (internal cites omitted). WSOU filed this action on June 2, 2020 and served Dell on July 

6, 2020. Nevertheless, Dell tactically waited five more months before it filed its petition, and now 

it seeks a stay due to its own delay. Now that trial is set for May 12, 2022, a stay will prejudice 

WSOU by depriving it of a timely jury trial. While a final written decision might issue July 1, 

2022, there is still uncertainty with respect to this date. The one-year deadline for a final written 

decision can be extended up to six months for good cause. If this were to occur, the Final Written 

Decision would be pushed back to January 1, 2023, nearly a year after the Court’s predicted trial 

date. Furthermore, this does not account for the almost certain Federal Circuit appeal of the final 

written decisions by one side or the other or both, which creates an even longer delay.

Because all relevant factors disfavor a stay, Dell’s motion should be denied. 

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 6 of 7
6

Dated: August 25, 2021 Respectfully submitted,

/s/ Ryan S. Loveless

James L. Etheridge

Texas State Bar No. 24059147

Ryan S. Loveless

Texas State Bar No. 24036997

Travis L. Richins

Texas State Bar No. 24061296

Brett A. Mangrum

Texas State Bar No. 24065671

Jeffrey Huang

ETHERIDGE LAW GROUP, PLLC

2600 E. Southlake Blvd., Suite 120 / 324

Southlake, Texas 76092

Telephone: (817) 470-7249

Facsimile: (817) 887-5950

Jim@EtheridgeLaw.com

Ryan@EtheridgeLaw.com

Travis@EtheridgeLaw.com

Brett@EtheridgeLaw.com

JHuang@EtheridgeLaw.com

Mark D. Siegmund

State Bar No. 24117055

mark@waltfairpllc.com

Law Firm of Walt, Fair PLLC.

1508 North Valley Mills Drive

Waco, Texas 76710

Telephone: (254) 772-6400

Facsimile: (254) 772-6432

ATTORNEYS FOR PLAINTIFF

CERTIFICATE OF SERVICE

I certify that the foregoing document was served upon all counsel of record via email in 

accordance with the Federal Rules of Civil Procedure on August 25, 2021.

/s/ Ryan S. Loveless

Ryan S. Loveless

Case 6:20-cv-00477-ADA Document 113 Filed 08/25/21 Page 7 of 7