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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

 Plaintiff,

v.

T-MOBILE USA, INC. and SPRINT 

CORP.,

 Defendants.

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Case No. 2:23-cv-00379-JRG-RSP

(Lead Case)

 ORDER

Before the Court is the Motion to Stay Pending Inter Partes Review, filed by T-Mobile 

USA, Inc. and Sprint Corp. (“Defendants”). Dkt. No. 93. After consideration, the motion is denied 

as premature.

I. BACKGROUND

Plaintiff Headwater Research LLC filed its complaint against T-Mobile USA, Inc. and 

Sprint Corp. in the above-captioned lead case on August 23, 2023, asserting infringement of U.S. 

Patent Nos. 8,924,543, and 9,198,042. Dkt. No. 1 at 1. Plaintiff Headwater Research LLC filed its 

complaint against T-Mobile USA, Inc. and Sprint Corp. in the member case (Case No. 2:23-cv377) on August 21, 2023, asserting infringement of U.S. Patent Nos. 8,589,541, and 9,215,613.

Dkt. No. 1 at 11

. The member case was consolidated with the above-captioned lead case on 

November 2, 2023. Dkt. No. 23. 

On September 23, 2024 the Court issued the most recently amended Docket Control Order. 

Dkt. No. 87. Pursuant to that Order, the claim construction hearing is set for November 19, 2024, 

1 In the 2:23-cv-377 case; all other Dkt. No. citations refer to the 2:23-cv-377 case unless noted otherwise. 

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fact discovery closes on December 30, 2024, expert discovery ends on February 3, 2025, and trial 

is set to begin on May 19, 2025, among other deadlines. Id. 

On April 19, 2024; June 7, 2024; and June 20, 2024, Defendants collectively filed a total 

of seven petitions for inter partes review of the four Asserted Patents. See IPR2024-00945, 

IPR2024-00944, IPR2024-00943, IPR2024-00942, IPR2024-01042, and IPR2024-01041. The 

Patent Trial and Appeal Board may take up to six months to decide whether to institute the IPR 

petitions. See 35 U.S.C. § 314(b). The Board instituted a trial for the ’042 Patent on October 23, 

2024. IPR2024-00809, Doc. 61. All other decisions are pending, with the latest date for an

institution decision being in January of 2025. See IPR2024-00945, IPR2024-00944, IPR2024-

00943, IPR2024-00942, IPR2024-01042, and IPR2024-01041. 

On October 10, 2024, Defendantsfiled the current Motion to Stay, requesting that the Court 

stay this case until the Board has concluded IPR of the Asserted Patents. Dkt. No. 93. The matter 

is now fully briefed.

2 As of the date of this Order, the Board has still not issued a decision regarding 

institution of six of the seven IPR petitions. 

II. LEGAL STANDARD

“The party seeking a stay bears the burden of showing that such a course is appropriate.” 

Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 218-cv-390-RWS-RSP, 2019 WL 3826051, 

at *1 (E.D. Tex. Aug. 14, 2019) (quoting Realtime Data, LLC v. Hewlett Packard Enter. Co., No. 

6:16-cv-86-RWS-JDL, 2017 WL 3712916, at *3 (E.D. Tex. Feb. 3, 2017)); accord Landis v. N. 

Am. Co., 299 U.S. 248, 255 (1936). “The decision of whether to extend a stay falls solely within 

the court’s inherent power to control its docket.” Pers. Audio LLC v. Google, Inc., 230 F. Supp. 

2 After Defendants filed the Motion on October 10, 2024, Plaintiff responded on October 25, 2024. Dkt. No. 98. 

Defendants then replied on November 1, 2024. Dkt. No. 102. Plaintiff filed their sur-reply November 11, 2024. Dkt. 

No. 107. 

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3d 623, 626 (E.D. Tex. 2017) (citing ThinkOptics, Inc. v. Nintendo, No. 6:11-cv-455-LED, 2014 

WL 4477400, at *1 (E.D. Tex. Feb. 27, 2014)); accord Clinton v. Jones, 520 U.S. 681, 706 (“The 

District Court has broad discretion to stay proceedings as an incident to its power to control its 

own docket.”) (citing Landis, 299 U.S. at 254). 

District courts typically consider three factors when deciding whether to stay litigation 

pending IPR of the asserted patent(s): “(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 simplify 

issues in question in the litigation.” Trover Grp., Inc. v. Dedicated Micros USA, No. 2:13-CV1047-WCB, 2015 WL 1069179, at *2 (E.D. Tex. Mar. 11, 2015) (collecting cases). 

III. ANALYSIS 

Defendants have not met their burden to show that a stay is appropriate as, most 

importantly, they did not show that the Board granted its petitions for IPR on all asserted patents 

and, therefore, claims. Since Defendants did not show there is a reasonable likelihood that the 

Board will invalidate all the asserted claims, their Motion fails. 

Whether a stay “will result in simplification of the issues before a court is viewed as the 

most important factor when evaluating a motion to stay.” Uniloc USA, 2017 WL 2899690, at *3 

(citing Intellectual Ventures II LLC v. Kemper Corp., No. 6:16-cv-81-JRG, 2016 WL 7634422, at 

*2 (E.D. Tex. Nov. 7, 2016); NFC Tech., 2015 WL 1069111, at *4). “Simplification of the issues 

depends on whether the PTAB decides to grant the petition.” Id. (citing Trover, 2015 WL 1069179, 

at *4; Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc., No. 2:13-cv-655-WCB, 2014 WL 

3736514, at *2 (E.D. Tex. July 29, 2014)).

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Here, this factor is the decisive one. Defendants contend that the IPR proceedings currently 

pending against Headwater’s asserted patents will greatly simplify the issues for this Court. Dkt. 

No. 93 at 1. However, the Board has not yet rendered any institution decisions on six of the seven 

petitions covering three of the four asserted patents. The “universal practice” in this District, as 

well as the practice of most district courts, is to deny a motion for stay when the Board has not yet 

acted on a petition for IPR. Trover, 2015 WL 1069179, at *6 (collecting cases); see also Peloton 

Interactive, 2019 WL 3826051, at *2 (citation omitted). Accordingly, the Court DENIES

Defendants’ Motion. 

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____________________________________

ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE SIGNED this 3rd day of January, 2012. SIGNED this 13th day of November, 2024.

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