IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

DEFENDANT VALEO SE’S MOTION TO STAY

FORAS TECHNOLOGIES LTD.,

Plaintiff,

v.

VOLKSWAGEN AG, APTIV PLC, and 

VALEO SE f/k/a VALEO SA,

Defendants.

Case No. 2:23-cv-314-JRG

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TABLE OF CONTENTS

I. Introduction....................................................................................................................... 1

II. Factual Background.......................................................................................................... 2

A. This Case Is In Its Early Stages .............................................................................. 2

B. Multiple Post-Grant Proceedings Are Pending at the USPTO Involving the 

Asserted Patent........................................................................................................ 2

III. Legal Standard.................................................................................................................. 3

IV. Argument........................................................................................................................... 6

A. A Stay Will Significantly Simplify or Eliminate Issues in this Litigation ............. 6

B. The Stage of the Case Weighs in Favor of a Stay................................................. 11

C. Foras Will Not Suffer Any Undue Prejudice or Tactical Disadvantage 

from a Stay............................................................................................................ 12

V. Conclusion ....................................................................................................................... 13

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TABLE OF AUTHORITIES

Page(s)

Cases

Arbor Glob. Strategies LLC v. Samsung Elecs. Co., Ltd.,

2021 WL 66531 (E.D. Tex. Jan. 7, 2021)............................................................................8, 12

AT&T Services,Inc. v. Broadband iTV, Inc.,

IPR2021-00556, 2021 WL 3775154 (PTAB Aug. 25, 2021)....................................................9

Aylus Nets., Inc. v. Apple Inc.,

856 F.3d 1353 (Fed. Cir. 2017)................................................................................................10

Celltrion, Inc. v. Genentech, Inc.,

IPR2018-01019, 2018 WL 5629316 (PTAB Oct. 30, 2018).....................................................9

Clinton v. Jones,

520 U.S. 681 (1997)...................................................................................................................3

Communication Technologies, Inc. v. Samsung Electronics America, Inc.,

No. 2:21-cv-00444-JRG, 2023 WL 1478447 (E.D. Tex. Feb. 2, 2023) .......................... passim

e-Watch Inc. v. Apple, Inc.,

2:13-cv-1061-JRG-RSP, 2015 WL 12915668 (E.D. Tex. Mar. 25, 2015)..............................12

Emed Techs. Corp. v. Repro Med. Sys. Inc.,

No. 2:15-cv-1167-JRG-RSP, 2016 WL 2758112 (E.D. Tex. May 12, 2016) ...........................5

Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd.,

No. 2:15-cv-00011-RSP, 2016 WL 1162162 (E.D. Tex. Mar. 23, 2016)..........................3, 4, 5

Foras Technologies Ltd. v. Bayerische Motoren Werke AG, et al.,

No. 6:23-cv-00386-RP (W.D. Tex. Apr. 22, 2024).............................................................4, 13

Landis v. North Am. Co.,

299 U.S. 248 (1936).................................................................................................................10

NFC Tech. LLC v. HTC Am.,

No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015)........................ passim

Norman IP Holdings, LLC v. TP-Link Techs., Co.,

No. 6:13-cv-384-JDL, 2014 WL 5035718 (E.D. Tex. Oct. 8, 2014)...................................7, 11

Ramot at Tel Aviv University Ltd. v. Cisco Systems, Inc.,

No. 2:19-cv-00225-JRG, 2021 WL 121154 (E.D. Tex. Jan. 13, 2021).................................4, 5

Case 2:23-cv-00314-JRG Document 70 Filed 04/23/24 Page 3 of 19 PageID #: 1628
iii

Resonant Systems, Inc. v. Samsung Electronics Co., Ltd.,

No. 2:22-cv-00423-JRG, 2024 WL 1021023 (E.D. Tex. Mar. 8, 2024)........................5, 11, 13

In re Rolls Royce Corp.,

775 F.3d 671 (5th Cir. 2014) ...................................................................................................10

SEVEN Networks, LLC v. Apple Inc.,

No. 2:19-cv-00115-JRG, Dkt. 313 Order (E.D. Tex. Sept. 20, 2020).......................................6

Stingray Music USA, Inc. v. Music Choice,

No. 2:16-cv-00586-JRG-RSP, 2017 WL 985167 (E.D. Tex. Dec. 12, 2017) .......................4, 6

Uniloc USA, Inc. v. Samsung Elecs. Am., Inc.,

No. 2:16-cv-642, 2017 WL 9885168 (E.D. Tex. June 13, 2017) ..............................................7

Veraseal LLC v. Wal-Mart Stores, Inc.,

2:17-cv-00527-JRG, 2018 WL 2183235 (E.D. Tex. May 11, 2018).......................................12

Veritas Technologies, LLC v. Realtime Data LLC,

IPR2017-00364, 2017 WL 2390871 (PTAB June 1, 2017).......................................................9

VirtualAgility Inc. v. Salesforce.com Inc.,

759 F.3d 1307 (Fed. Cir. 2014)................................................................................................13

Statutes

35 U.S.C. § 101..............................................................................................................................10

35 U.S.C. § 305................................................................................................................................3

35 U.S.C. § 315(e) .....................................................................................................................8, 11

35 U.S.C. § 316................................................................................................................................2

Rules

Fed. R. Civ. P. 21...........................................................................................................................10

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I. INTRODUCTION

Defendant Valeo SE f/k/a Valeo SA (“Valeo”) moves to stay this litigation, or alternatively 

sever and stay the claims against Valeo, to conserve the Court’s and parties’ resources. Plaintiff 

Foras Technologies Ltd. (“Foras”) asserts only U.S. Patent No. 7,502,958 (“the ’958 Patent”) in 

this case. As of March 20, 2024, all claims of the ’958 Patent asserted against Valeo are under 

review by the Patent Trial and Appeal Board (“PTAB”) in an instituted IPR. In this last week, 

Valeo also filed its own IPR petition—asserting the same ground as in this instituted IPR—as well 

as a motion to join that instituted IPR. Further, all claims of the ’958 Patent are under review by 

the Central Reexamination Unit (“CRU”) of the United States Patent and Trademark Office 

(“USPTO”) in an ex parte reexamination and in that reexamination, all claims have been rejected 

in a non-final rejection. 

Fact discovery just recently opened in this case and significant case milestones are months, 

if not more than a year, away. Invalidity contentions are not due until July 2024, claim construction 

deadlines do not begin until September 2024, fact discovery does not close until March 2025, and 

trial is not scheduled to begin until August 2025. A stay pending resolution of the post-grant 

proceedings at the PTAB and USPTO will significantly simplify or eliminate issues in this 

litigation that has barely begun. The PTAB instituted review of all claims asserted against Valeo 

while all other claims of the ’958 Patent are additionally under review by the CRU. The instituted 

IPR has the potential of disposing of all claims and issues concerning Valeo in this litigation. 

Further, a stay will not unduly prejudice Foras because it sells no products, and any speculative 

harm can be remedied through monetary damages. A stay should be granted here to conserve the 

parties’ and the Court’s resources while the PTAB and CRU evaluate the claims of the ’958 Patent

in proceedings that are likely to reduce or eliminate entire issues in this litigation.

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II. FACTUAL BACKGROUND

A. This Case Is In Its Early Stages

This case has barely begun. While Foras filed its original Complaint against Valeo on June 

28, 2023, Foras did not serve that Complaint on Valeo until November 27, 2023. Dkts 1, 9. Fact 

discovery just opened on April 15, 2024 and is not set to close until March 2025. Dkt. 67 at 4-5. 

Not only is fact discovery not complete, it has barely started. The parties have served no 

interrogatories and no depositions have occurred. All major milestones in this case will occur 

months in the future: invalidity contentions are not due until July 2024, the claim construction 

process does not begin with the exchange of proposed terms for construction until September 2024, 

and the Court will not hold a Markman hearing until February 2025. Dtk. 67 at 4. The parties are 

far from starting expert discovery and dispositive motions, pre-trial deadlines, and trial (scheduled 

to begin in August 2025) are well into the future. Dkt. 67.

B. Multiple Post-Grant Proceedings Are Pending at the USPTO Involving the 

Asserted Patent

All claims of the ’958 Patent are subject to post-grant proceedings by the USPTO. On 

March 20, 2024, the PTAB instituted an IPR of claims 1–8 and 13–22 of the ’958 patent. Ex. 1

(Institution Decision) at 2, 39. This includes all claims Foras has asserted against Valeo in this 

case.

1

 Under 35 U.S.C. § 316, the PTAB must enter its Final Written Decision by March 20, 2025, 

long before trial will occur in this case. While that IPR was filed by BMW of North America, 

LLC and Robert Bosch LLC (“BMW IPR”, attached as Ex. 3), Valeo also has filed an IPR petition, 

asserting the same ground as in the BMW IPR, as well as a motion to join that already-instituted 

1 Foras asserts claims 1–6, 8, 19, and 20 against Valeo. Ex. 2 (Foras’ Disclosure of Asserted 

Claims and Infringement Contentions for Valeo) at 2.

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IPR. Ex. 4 (Valeo’s IPR Petition) , Ex. 5 (Valeo’s Motion for Joinder). A chart summarizing the 

status of the instituted IPR challenge to the ’958 patent is below:

Case No. Claims 

Challenged

Instituted 

Claims

Institution Date Final Written 

Decision Date

IPR2023-01373 1–8, 13–22 1–8, 13–22 March 20, 2024 No later than 

March 20, 2025

Further, Unified Patents, LLC requested—and the USPTO’s CRU ordered—reexamination 

of all claims of the ’958 patent. See Ex. 6 (CRU Order Granting Request for Reexam) at 25. On 

March 19, 2024, the CRU issued its first Non-Final Office Action, rejecting all claims of the ’958 

patent. See Ex. 7 (Non-Final Office Action). Reexamination proceedings are conducted with 

“special dispatch within the Office” under 35 U.S.C. § 305, though there is no statutory deadline. 

A chart summarizing the EPR challenge to the ’958 Patent is below:

Re-examination 

Application No.

Claims 

Rejected by 

Non-Final 

Office Action

Non-Final 

Office Action 

Issue Date

Response to 

Non-Final 

Office Action 

Due Date

Re-examination 

Grant Date

90/019,245 

(’958 patent)

1–25 March 19, 2024 May 19, 2024 November 29, 

2023

Thus, all of the claims of the ’958 patent are presently subject to an instituted IPR and/or

have been rejected in EPR. 

III. LEGAL STANDARD

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

control its own docket.” Clinton v. Jones, 520 U.S. 681, 706 (1997); see also Ericsson Inc. v. TCL 

Commc’n Tech. Holdings, Ltd., No. 2:15-cv-00011-RSP, 2016 WL 1162162, at *1 (E.D. Tex. Mar. 

23, 2016) (“A district court has the inherent power to control its own docket, including the power 

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to stay proceedings before it.”) When evaluating whether to stay a case pending inter partes

review, courts in this district consider three factors: (1) “whether the stay will likely result in 

simplifying the case before the court,” (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 unduly prejudice the nonmoving party.” NFC Tech. LLC v. HTC Am., No. 

2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015). “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.” Communication Technologies, Inc. v. 

Samsung Electronics America, Inc., No. 2:21-cv-00444-JRG, 2023 WL 1478447, at *1 (E.D. Tex. 

Feb. 2, 2023); see also Ramot at Tel Aviv University Ltd. v. Cisco Systems, Inc., No. 2:19-cv00225-JRG, 2021 WL 121154, at *2 (E.D. Tex. Jan. 13, 2021); Stingray Music USA, Inc. v. Music 

Choice, No. 2:16-cv-00586-JRG-RSP, 2017 WL 985167, at *2 (E.D. Tex. Dec. 12, 2017); see also 

Ericsson, 2016 WL 1162162, at *1 (citing NFC Tech., 2015 WL 1069111, at *2).

Applying these factors, courts grant stays in circumstances like those here. Foras 

Technologies Ltd. v. Bayerische Motoren Werke AG, et al., No. 6:23-cv-00386-RP, Dkt. 43 at 3-4

(W.D. Tex. Apr. 22, 2024) (Ex. 8) (granting stay of Foras’ claims against BMW and Robert Bosch

concerning the ’958 Patent—the same patent at issue against Valeo—as every claim of the ’958 

Patent is under review either through IPR or EPR proceedings and where 9 of the 16 claims 

asserted against the defendants were instituted in the IPR, where “substantive milestones in th[e] 

case ha[d] not yet occurred” as the court only recently entered a scheduling order and held a case 

management conference and the Markman hearing was not scheduled until August 2024, the court 

did not yet rule on pending motions to dismiss nor issued any other substantive order, and where 

Foras would not suffer undue prejudice as it “does not produce products on its patents nor does it 

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compete with Defendants”); see also Communication Techs., Inc. v. Samsung Electronics 

America, Inc., 2023 WL 1478447, at *2-4 (granting stay where all claims of the asserted patent 

were under PTO review, the close of fact discovery, the claim construction hearing and trial were 

all well in the future, and patent owner would not suffer undue prejudice as monetary damages 

were adequate); Resonant Systems, Inc. v. Samsung Electronics Co., Ltd., No. 2:22-cv-00423-JRG, 

2024 WL 1021023, at *2-4 (E.D. Tex. Mar. 8, 2024) (granting stay where IPR had been instituted 

on every asserted claim, the bulk of depositions were yet to occur, a Markman hearing had not yet 

been held, and where the plaintiff had not “identified any prejudice beyond the delay of the 

vindication of its patent rights and alleged entitlement to collect money damages [which] is not 

enough to show undue prejudice”); Ramot at Tel Aviv University, 2021 WL 121154, at *2 (granting 

a stay where all asserted claims were rejected in preliminary Office Actions in ex parte reexams 

and noting that “[w]hen claims are rejected in an ex parte reexamination proceeding, the patent 

owner can narrow, cancel, or submit new claims. Thus, the asserted claims that have been rejected 

in the reexamination proceedings are almost surely to be modified in some material way in 

response to their rejection, and they may be dropped completely. They will not likely stay as they 

were when this suit was filed. If the case were to proceed to trial on the current claims, there is a 

serious risk of wasted resources as to the parties and the Court” despite the stay coming “late in 

the progression of this case”); Ericsson, 2016 WL 1162162, at *3 (granting stay where IPRs had 

been instituted on all asserted claims, noting “it is likely that some or all claims will be invalidated” 

and “[t]o the extent claims are not invalidated, the IPR proceedings will likely remove prior art 

references from this case”); Emed Techs. Corp. v. Repro Med. Sys. Inc., No. 2:15-cv-1167-JRGRSP, 2016 WL 2758112, at *2-3 (E.D. Tex. May 12, 2016) (granting stay where IPRs had been 

instituted on all asserted claims); Stingray Music USA, Inc. v. Music Choice, No: 2:16-cv-00586-

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JRG-RSP, 2017 WL 9885167, at *2 (E.D. Tex. Dec. 12, 2017) (granting stay where IPRs had been 

instituted on “every asserted claim save two, which suggests a substantial likelihood of 

simplification” and where plaintiff was not unduly prejudiced as a stay “would not diminish the 

monetary damages to which a successful infringement plaintiff is entitled”); SEVEN Networks, 

LLC v. Apple Inc., No. 2:19-cv-00115-JRG, Dkt. 313 Order (E.D. Tex. Sept. 20, 2020) (severing 

and staying as to instituted claims for 9 asserted patents pending resolution of inter partes review 

proceedings, where “the pretrial conference is less than a month away and jury selection is less 

than six weeks away”) Ex. 9 (Order in Seven Networks v. Apple).

IV. ARGUMENT

The Court should stay this case because all factors favor a stay. First, a stay will 

significantly simplify or eliminate issues in this litigation. The PTAB has instituted inter partes

review of all claims of the ’958 Patent asserted against Valeo while the USPTO has ordered 

reexamination of, and has issued an Office Action rejecting, all claims (both asserted and 

unasserted against Valeo) of the ’958 Patent. These proceedings likely will reduce or potentially 

eliminate any burden parallel litigation would otherwise impose, conserving both party and judicial 

resources. Second, this litigation is in its very early stages. Discovery has only just opened, neither 

Valeo nor Foras have served any interrogatories, and the deadlines for invalidity contentions and 

the exchange of proposed claim terms for claim construction are months away. Third, a stay will 

not unduly prejudice Foras because it sells no products. Thus, any harm Foras may argue it would 

incur from a stay can be remedied through monetary damages.

A. A Stay Will Significantly Simplify or Eliminate Issues in this Litigation

“[T]he 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 issues before the Court.” 

NFC Techs., 2015 WL 1069111, at *4. A stay is “particularly justified where the outcome of the 

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[PTO proceeding] would be likely to assist the court in determining patent validity and, if the 

claims were canceled in the [PTO proceeding], would eliminate the need to try the infringement 

issue.” Norman IP Holdings, LLC v. TP-Link Techs., Co., No. 6:13-cv-384-JDL, 2014 WL 

5035718, at *2 (E.D. Tex. Oct. 8, 2014). “Where the PTAB institutes inter partes review of every 

asserted claim, such tends to suggest a substantial likelihood of simplification.” Communication 

Techs., Inc. v. Samsung Electronics America, Inc., No. 2:21-cv-00444-JRG, 2023 WL 1478447, 

at *2 (E.D. Tex. Feb. 2, 2023); see also Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., No. 2:16-

cv-642, 2017 WL 9885168, at *1 (E.D. Tex. June 13, 2017) (“[E]ven if the PTAB does not 

invalidate every claim on which it has instituted IPR, there is a significant likelihood that the 

outcome of the IPR proceedings will streamline the scope of this case to an appreciable extent.”).

This factor strongly favors a stay.

Here, all claims of the ’958 Patent asserted against Valeo are currently under active PTAB 

review. And all other claims of the ’958 Patent are under review by the USPTO in Unified Patents’ 

EPR. Should the IPR (and EPR) result in cancelation of some or all of the claims, “either some 

portion of the litigation will fall away, or the litigation will come to an end altogether.” NFC 

Techs., 2015 WL 1069111, at *4. Indeed, with all claims of the ’958 Patent that are asserted 

against Valeo being instituted in the BMW IPR, there is a potential of full resolution of the claims 

against Valeo. 

Recent studies regarding success rates at the USPTO demonstrate why the stay requested 

here is likely to simplify the issues. Approximately 78.4% of the challenged claims of granted 

EPRs are invalidated or amended. Ex. 10 (Ex Parte Reexamination Filing Data) at 2.2

 All 25 

2 Available at 

https://www.uspto.gov/sites/default/files/documents/ex_parte_historical_stats_.pdf. The 

statistics show 1696 Certificates with all claims canceled. 8012 Certificates with claims 

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claims (including each of the 9 claims asserted against Valeo) of the ’958 Patent are subject to 

EPR. Likewise, the PTAB’s statistics show that in FY2023, the PTAB invalidated approximately 

77.7% of claims in IPRs that reached final written decision. Ex. 11 (PTAB Trial Statistics) at 13.3 

With multiple grounds under review of the claims asserted against Valeo (the grounds in the EPR 

are different from those in the IPRs), “there is a strong likelihood that the [PTO proceedings] will 

result in cancellation of all asserted claims.” Communication Techs., 2023 WL 1478447, at *4; 

see also Arbor Glob. Strategies LLC v. Samsung Elecs. Co., Ltd., 2021 WL 66531, at *3 (E.D. 

Tex. Jan. 7, 2021) (“institution on multiple grounds, as is the case here...show[s] a likelihood of 

invalidating every claim and satisfying the movant’s burden”). Thus, a stay that allows for 

resolution of the pending IPR and EPR proceedings could significantly simplify, if not completely 

resolve, the instant case.

With Valeo filing an IPR4

—asserting the same ground of unpatentability as in BMW’s 

IPR—if the PTAB were to find some or all of the claims under review to be valid, under 35 U.S.C. 

changed, and 12383 Total ex parte reexamination certificates issued. See Ex. 10 (Ex Parte

Reexamination Filing Data) at 2. These numbers yield: (1,696 + 8,012) / 12,383 = 78.4%.

3 Available at 

https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2023__roundup.pdf. The 

PTAB’s statistics show 1,691 “Patentable” claims compared to 5,894 “Unpatentable” claims 

at Final Written Decision, after removing claims that were disclaimed or not considered due 

to settlement. See Ex. 11 (PTAB Trial Statistics) at 13. These numbers yield: 5,894 / (1,691 

+ 5,894) = 77.7%.

4 While Valeo’s IPR petition is not yet instituted as it was filed April 18, 2024, the IPR petition 

to which it seeks to join—the BMW IPR—has been instituted. Further, Valeo’s IPR petition 

sets forth the same ground against the same claims using the same prior art as the BMW IPR, 

Valeo will use the same expert and evidence as in the BMW IPR, and Valeo has agreed to take 

an understudy role in the IPR such that the schedule of the BMW IPR will not be affected. 

(Ex. 5 at 6-8). Under such circumstances, institution and joinder to an already-instituted IPR 

are granted. See AT&T Services ,Inc. v. Broadband iTV, Inc., IPR2021-00556, 2021 WL 

3775154, at *8 (PTAB Aug. 25, 2021) (granting joinder where petitioner challenged the same 

claims on the same grounds using the same prior art and evidence as the already-instituted IPR 

and explicitly agreed to take an understudy role); Celltrion, Inc. v. Genentech, Inc., IPR2018-

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§ 315(e), Valeo will be estopped from asserting invalidity defenses based on any ground raised or 

that reasonably could have been raised during the IPR. Even if the final written decision in the 

BMW IPR (and Valeo’s IPR) as well as the EPR, does not result in cancelation of all the claims, 

the case will still be simplified even if only some of the claims are canceled and because Valeo 

will not assert that the claims are invalid on any ground raised or that reasonably could have been 

raised in the IPR proceedings. See NFC Tech., 2015 WL 1069111, at *4. (“If the proceedings 

before the PTAB result in confirmation of the patent claims being asserted in court, the defendant 

will be estopped from challenging the validity of the claims on any ground that was, or could 

reasonably have been, asserted in the inter partes proceeding.”). Thus, regardless of whether all 

asserted claims of the ’958 Patent are invalid, the IPRs and EPR will surely narrow the scope of 

numerous claims at issue.

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 

[a] patent[] being asserted in litigation.” NFC Tech., 2015 WL 1069111, at *4. The Court should 

stay this case and prevent the parties from unnecessarily expending further valuable resources—

on invalidity contentions, claim construction,5 fact discovery, expert discovery, summary 

judgment and trial—while the USPTO reviews the asserted claims. Moreover, Valeo has a 

pending motion to dismiss the patent claims as invalid under 35 U.S.C. § 101. (Dkt. 46). Should 

01019, 2018 WL 5629316, at *6-7 (PTAB Oct. 30, 2018) (granting joinder when petitioner 

submitted a “copycat” petition and declaration, and agreed to take an understudy role in the 

proceedings); Veritas Technologies, LLC v. Realtime Data LLC, IPR2017-00364, 2017 WL 

2390871, at *2-3 (PTAB June 1, 2017) (same).

5 Any statements by Foras regarding claim scope in the PTO proceedings becomes part of the 

intrinsic record and may serve as disclaimer, meaning the Court might need to re-engage in 

claim construction should it issue a Markman order and Foras later narrows its claims during 

IPR or EPR. See Aylus Nets., Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017).

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the Court stay the case pending the outcome of the IPRs and EPR, it may not ultimately have to 

rule on this motion. Instead, it could either avoid the motion altogether, or rule on a limited subset 

of claims depending on which (if any) claims survive IPR and EPR. This would simplify Valeo’s 

motion to dismiss, and possibly dispose of it entirely, conserving judicial resources.

Valeo believes that the facts underlying this motion warrant a stay of the entire litigation

as the pending IPRs and EPR will significantly simplify and eliminate issues that are applicable to 

both Valeo as well as Aptiv (the other active defendant in this case). However, Valeo also believes 

that severance and a stay of just the claims against Valeo, under Fed. R. Civ. P. 21, will also result 

in significant simplification and potential elimination of all Valeo-specific issues.

6

 Foras asserts 

that Valeo infringes the ’958 Patent based on Valeo products containing chipsets supplied by

Renesas while Foras asserts that Aptiv infringes the ’958 Patent based on Aptiv products 

containing chipsets supplied by Infineon. The infringement claims against Valeo and Aptiv are 

based on different products and concern chipsets supplied by different suppliers. Thus, if the 

claims against Aptiv were to proceed while the claims against Valeo were stayed, the Court need 

not worry of eventual duplication of efforts if the claims against Valeo were to proceed at a later 

date after a stay pending the IPRs and EPR. The infringement allegations against Aptiv and Valeo 

do not overlap. Different products, witnesses, facts, and third-party discovery will be needed with 

respect to each defendant. Further, because Valeo has agreed to 35 U.S.C. § 315(e) estoppel, any 

overlap of invalidity arguments would be minimal as well.

6 A district court has broad discretion to sever any claim against any party. Fed. R. Civ. P. 21; 

In re Rolls Royce Corp., 775 F.3d 671, 680 (5th Cir. 2014). If severance is warranted, a court 

may stay those claims pending resolution of the non-severed claims. Landis v. North Am. Co., 

299 U.S. 248, 354 (1936) (“[T]he power to stay proceedings is incidental to the power inherent 

in every court to control the disposition of the causes on its docket with economy of time and 

effort for itself, for counsel, and for litigants.”).

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B. The Stage of the Case Weighs in Favor of a Stay

Under this factor, “Courts often find the stage of litigation weighs in favor of a stay if there 

remains a significant amount of work ahead for the parties and the court, even when the parties 

and/or the court have already devoted substantial resources to litigation.” Norman IP Holdings, 

2014 WL 5035718, at *3. This case is just in its infancy. Not only is fact discovery not completed 

here, it has barely even started. While Foras has served its Infringement Contentions and the 

parties have exchanged Initial Disclosures (Dkt. 67 at 5-6), the parties have served no 

interrogatories and no depositions have occurred. The close of fact discovery is not until March 

2025. Dkt. 67 at 4. Further, invalidity contentions are not due until July 2024 and the claim 

construction process does not begin with the exchange of proposed terms for construction until 

September 2024. Dkt. 67 at 5. The Court will not hold a Markman hearing until February 2025. 

Dkt. 67 at 4. The parties are far from starting expert discovery and dispositive motions, pre-trial 

deadlines, and trial are well into the future. “[T]he bulk of the expenses that the parties would 

incur in pretrial work and trial preparation are still in the future.” NFC Techs., 2015 WL 1069111, 

at *3; see also Communication Techs., Inc. v. Samsung Electronics America, Inc., 2023 WL 

1478447, at *2 (granting stay where the close of fact discovery, the claim construction hearing and 

trial were all well in the future); Resonant Systems, Inc. v. Samsung Electronics Co., Ltd., No. 

2:22-cv-00423-JRG, 2024 WL 1021023, at *2-4 (E.D. Tex. Mar. 8, 2024) (granting stay where 

the bulk of depositions were yet to occur and a Markman hearing had not yet been held).

Valeo has also “acted with reasonable dispatch in filing its petition[] for inter partes

review” and “filing its motion for a stay.” NFC Techs., 2015 WL 1069111, at *3. Valeo filed its 

petition and motion to join the BMW IPR within one month after the BMW IPR was instituted, 

which is less than five months after service of Foras’ original Complaint on Valeo and just a month 

after service of Foras’ First Amended Complaint. Dkts. 9, 45. Moreover, Valeo seeks a stay just

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days after it filed its IPR petition and motion to join BMW’s IPR, which is also just a month after

the institution of the BMW IPR and the CRU’s first Non-Final Office Action rejecting all claims 

of the ’958 Patent.

A stay at this stage would significantly conserve both judicial and party resources. Courts 

in this district have stayed cases pending PTO proceedings that are in a similar or more advanced 

procedural posture. For example, in Veraseal LLC v. Wal-Mart Stores, Inc., the court recognized 

the benefits of a stay because “the patent claims have not yet been construed by the Court, and 

discovery is not yet complete.” 2:17-cv-00527-JRG, 2018 WL 2183235, at *2 (E.D. Tex. May 11, 

2018); see also e-Watch Inc. v. Apple, Inc., 2:13-cv-1061-JRG-RSP, 2015 WL 12915668, at *3 

(E.D. Tex. Mar. 25, 2015) (granting stay when “over three-and-a-half months remained within the 

fact discovery period”). This Court has even stayed cases pending PTO proceedings where the 

litigation was nearing trial. See, e.g., Arobor Glob. Strategies LLC v. Samsung Elecs. Co., Ltd., 

2:19-cv-00333-JRG-RSP, 2021 WL 66531, at *3 (E.D. Tex. Jan. 7, 2021) (granting stay with only 

3 months before trial). Thus, this factor also weighs strongly in favor of a stay.

C. Foras Will Not Suffer Any Undue Prejudice or Tactical Disadvantage from a 

Stay

A stay of this case pending the IPRs and EPR will not cause Foras undue prejudice or 

tactical disadvantage. Foras is a nonpracticing entity seeking only monetary damages. Dkt. 45, 

¶¶ 36-37, Prayer for Relief. Courts repeatedly hold that delay in collecting monetary damages or 

enforcing patent rights does not amount to undue prejudice or tactical disadvantage. See NFC 

Tech., 2015 WL 1069111, at *2 (noting that prejudice based on “delay in vindication of patent 

rights” is “not sufficient, standing alone, to defeat a stay motion”); VirtualAgility Inc. v. 

Salesforce.com Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014) (“A stay will not diminish the monetary 

damages to which [the patentee] will be entitled if it succeeds in its infringement suit—it only 

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delays realization of those damages[.]”). Further, Foras does not compete with Valeo. Under 

similar circumstances, Courts hold that monetary relief provides adequate compensation for any 

alleged infringement. See, e.g., NFC Tech., 2015 WL 1069111, at *2 (finding no undue prejudice 

because “[Plaintiff] does not dispute [Defendant’s] contention that it does not compete with 

[Defendant] and that monetary relief will be sufficient to compensate it for any injury to its patent 

rights.”); see also Communications Techs., 2023 WL 1478447 at *2 (finding no undue prejudice 

where monetary damages would provide adequate compensation for any alleged infringement); 

Resonant Systems, 2024 WL 1021023, at *4-5 (granting stay where plaintiff had not “identified 

any prejudice beyond the delay of the vindication of its patent rights and alleged entitlement to 

collect money damages [which] is not enough to show undue prejudice.”). Indeed, a Western 

District of Texas court has already decided that Foras will suffer no undue prejudice as a result of 

a stay of claims involving the ’958 Patent against other defendants. See Foras Technologies Ltd. 

v. Bayerische Motoren Werke AG, et al., No. 6:23-cv-00386-RP, Dkt. 43 at 4 (W.D. Tex. Apr. 22, 

2024) (Ex. 8). Further, Foras has had no problem with delay in the progress of this case. Despite 

filing its original Complaint on June 28, 2023, it did not serve Valeo with that Complaint until 

November 27, 2023. Dkts. 1, 9.

In contrast to Foras, Valeo will suffer undue prejudice without a stay by incurring the 

burden of continuing to defend against infringement allegations of patent claims that the PTAB 

and/or CRU are likely to invalidate. Without a stay, this case will advance toward trial, and the 

parties and the Court will continue to invest significant time and resources in preparing the case.

V. CONCLUSION

Valeo respectfully requests that the Court stay this case, or alternatively sever and stay the 

claims against Valeo, pending resolution of the IPR proceedings at the PTAB and the EPR 

proceeding at the USPTO against the ’958 Patent.

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Dated: April 23, 2024 Respectfully submitted,

/s/ Russell E. Levine

Russell E. Levine, P.C.

IL Bar No. 6193834 (admitted in E.D. Tex.)

russell.levine@kirkland.com

Kourtney Baltzer

IL Bar No. 6308539 (admitted in E.D. Tex.)

Kourtney.baltzer@kirkland.com

KIRKLAND & ELLIS LLP

300 North LaSalle Street

Chicago, IL 60654

Tel: (312) 862-2000

Facsimile: (312) 862-2200

Melissa R. Smith (TX SBN 00790553)

melissa@gillamsmith.com

GILLAM & SMITH LLP

303 South Washington Avenue

Marshall, Texas 75670

Telephone: (903) 934-8450

Attorneys for Defendant Valeo SE f/k/a Valeo SA

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15

CERTIFICATE OF CONFERENCE

Pursuant to Local Rules CV-7(h) and (i), counsel for Valeo met and conferred with counsel 

for Foras as well as counsel for Aptiv. Aptiv is unopposed to Valeo’s motion for a stay while 

Foras is opposed. Kourtney Baltzer, counsel for Valeo, spoke by teleconference with Brett 

Cooper, counsel for Foras, on April 22, 2024. The parties could not reach agreement as to a stay 

of the litigation at this time. Foras’ counsel confirmed that Foras opposes the relief sought by this 

motion. Thus, this issue has come to an impasse requiring the Court’s intervention.

 

 /s/ Kourtney Baltzer

 Kourtney Baltzer

CERTIFICATE OF SERVICE

I hereby certify that on April 23, 2024, 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.

/s/ Russell E. Levine

Russell E. Levine, P.C.

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