IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

ASUS TECHNOLOGY LICENSING 

INC., et al,

 Plaintiffs,

v.

AT&T CORP., et al,

 Defendants.

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CASE NO. 2:23-CV-00486-JRG-RSP

(Lead Case)

MEMORANDUM ORDER

This case comes before the Court as part of the continuing efforts to manage the interaction 

between Plaintiffs’ patent infringement actions against the cellular telecommunications carriers, 

and Plaintiffs’ actions against the same defendants arising in antitrust, unfair competition and 

tortious interference. On November 19, 2024, the Court held a hearing in the antitrust case,

Celerity IP LLC v. AT&T Corp, 2:24-cv-00721-JRG-RSP (“Antitrust Case”), during which the 

Court explained the concern and gave Plaintiffs an opportunity to address a course of action. The 

effort did not ultimately bear fruit. For the reasons discussed below, the above-captioned case is 

STAYED pending resolution of the motions to dismiss in the Antitrust Case.

I. BACKGROUND

On October 19, 2023, Plaintiffs filed a series of patent infringement lawsuits against the 

Defendants in this now consolidated action (“Infringement Case”). See Dkt. No. 1; Dkt. No. 45 

(consolidation order). Thereafter, on July 16, 2024, Plaintiffs filed suit against the Carrier 

Defendants and Ericsson (an intervenor-defendant in the above-captioned action) in a Dallas 

County state court asserting claims under Texas law for unfair competition and tortious 

interference. Dkt. No. 211-7. On August 8, 2024, Defendants filed a Motion to Stay the aboveCase 2:23-cv-00486-JRG-RSP Document 328 Filed 12/06/24 Page 1 of 7 PageID #:

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captioned case pending resolution of the Dallas County case on the basis that the co-pending case 

would “effectively thwart Defendants’ constitutional right to participate in a joint defense group, 

pry into Defendants’ privileged communications, and obstruct Defendants’ ability to defend and 

assert claims pending before this Court.” Dkt. No. 211 at 8. On August 30, 2024, The Court held 

a hearing on the Motion (by which time the Dallas County case had been removed to federal court 

in the Northern District of Texas).1 Dkt. No. 263. The Court carried the Motion to stay pending 

resolution of motions to remand and transfer in the Northern District of Texas. Dkt. No. 319 at 66: 

15–18. 

Shortly thereafter, on September 3, 2024, the Northen District of Texas transferred the 

removed Dallas County case to this Court. Dkt. No. 25.

2 On September 16, 2024, Plaintiffs 

amended their complaint to add factual allegations and two new causes of action under federal 

antitrust law. Dkt. No. 36. The Carriers and Ericsson each filed motions to dismiss in the Antitrust 

Case under FRCP 12(b)(6). Dkt. No. 41 (Carriers), Dkt. No. 42 (Ericsson). The Court held a 

hearing to determine how to properly proceed with the two actions. Dkt. No. 74. 

During the hearing, the Court expressed its concern that the Antitrust Case would have a 

chilling effect on the Defendants’ ability to defend the Infringement Case. Dkt. No. 81 at 24: 18–

23 (“[R]egardless of the communications that go on if you are relying upon the actions taken as 

also constituting evidence of conspiracy, and by that I mean the actions taken in the defense of the 

infringement action, then I think that is chilling in and of itself.”). The Court made it clear that it 

would: 

1 Dkt. No. 1 in Celerity IP LLC v. AT&T Corp, 2:24-cv-00721-JRG-RSP.

2 Hereinafter all citations to the docket are to Celerity IP LLC v. AT&T Corp, 2:24-cv-00721-JRG-RSP because that 

is where the Parties have litigated this issue.

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[D]elay the patent infringement case unless there is some resolution of the concerns 

about the antitrust case and the effects of that on [Defendants’] ability to defend the 

patent infringement case unhindered. And I don’t see another way to allow that to 

happen other than resolving the antitrust case either by motion practice, summary 

judgment, trial, whatever it takes . . .

Id. at 22–23: 23–25, 1–6. In response—to avoid delaying the infringement case—counsel for 

Plaintiffs indicated that Plaintiffs would dismiss the antitrust claims with prejudice. Id. at 27: 1–4. 

However, counsel for Plaintiffs represented that Plaintiffs would keep an unfair competition claim 

against Ericsson on the grounds that “that claim doesn't sound in any of the litigation defense issues 

that are at play here.” Id. at 28: 8–9. The Court instructed the Parties to brief their positions after 

discussing the implications with their clients.

II. LEGAL STANDARD

District courts have the power to stay proceedings as part of their inherent power to control 

their own dockets. Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); Nelson v. Grooms, 307 F.2d 

76, 78 (5th Cir. 1962).

III. ANALYSIS

Rather than dismiss all the claims against the Carriers, as discussed at the hearing, Plaintiffs

filed a notice indicating that they are “prepared to dismiss with prejudice Counts 1 and Counts 2 

(the Sherman Act claims against Service Provider Defendants) and the parts of Count 5 directed 

at Service Provider Defendants that have as their predicate Counts 1 and 2.” Dkt. No. 79 at 2. 

Attached to that Motion, Plaintiffs filed a Motion for Leave to File an Amended Complaint and 

attached their proposed amended complaint. Dkt. Nos. 79-1, 79-2. They explain that: 

The claims pleaded in the First Amended Complaint were:

• Counts 1-2: Sherman Act violations against Service Providers based on formation 

and maintenance of a buyers cartel;

• Count 3: Tortious interference with contract against Ericsson;

• Count 4: Tortious interference with prospective business relationship against 

Service Providers and Ericsson;

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• Count 5: Unfair competition against Service Providers and Ericsson. The predicate 

for this claim as to the Service Providers is Counts 1-2.

The proposed Second Amended Complaint proposes to plead:

• Count 1: Tortious interference with contract against Ericsson;

• Count 2: Tortious interference with prospective business relationship against 

Service Providers and Ericsson;

• Count 3: Unfair competition against Ericsson, none of whose predicates relate to 

the formation or maintenance of a buyer’s cartel;

• Count 4: Declaratory Judgment that the plaintiffs have complied with ETSI 

obligations and that the Service Providers have not.

Dkt. No. 79-1 at 2. Defendants counter that Plaintiffs’ proposal leaves them in substantially the 

same position as before and thus they request a stay of the infringement case pending resolution 

of the claims in the Antitrust Case through voluntary dismissal with prejudice, motions to dismiss, 

summary judgment, or trial. Dkt. No. 82 at 1–2. Defendants provide a chart that compares 

Plaintiffs’ pleadings in their First Amended Complaint and their Proposed Second Amended 

Complaint (“SAC”).3 Id. at 2–3. They argue that the SAC “continues to allege the very same illegal 

agreement as the basis for Plaintiffs’ tortious interference and Texas antitrust claims that formed 

the basis for their Sherman Act claims.” Id. at 3. Additionally, Defendants argue that to prove the 

unfair competition claim against Ericsson under Texas Law Plaintiffs would need to implicate the 

carriers as co-conspirators. Id. at 5–6. Defendants conclude that Plaintiffs “will seek the very same 

evidence of the very same alleged antitrust conspiracy to prove up their claims against Ericsson 

and their claim against the Carriers.” Id. at 6. In reply, Plaintiffs argue that they have cured all 

potential chilling effects on the defense of the Infringement Case because they have 

unambiguously disclaimed any reliance on the common legal advice provided in the Infringement 

Case, have removed any claims directed at the Service Providers collectively (and replaced it with 

3 The Chart is reproduced below in the Appendix.

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claims against them as separate entities), and there is no allegation of conspiracy between the 

Service Providers and Ericsson. Dkt. No. 83. 

The Court finds that the chilling effect of the Antitrust Case on Defendants’ joint defense 

of the Infringement Case is too prejudicial to allow the Infringement Case to proceed as scheduled. 

The Court believes that the only just resolution is to stay the Infringement Case, at least until the 

disposition of the pending motions to dismiss in the Antitrust Case. The Court does not believe 

that Plaintiffs’ proposed SAC adequately cures the concerns the Court has about the chilling effect 

on Defendants’ ability to jointly litigate a patent infringement case. Defendants should not be 

forced to litigate under the cloud of a collateral litigation implicating Defendants’ licensing 

discussions about the patents-in-suit in the Infringement Case. In so deciding, the Court does not 

address the merits of Plaintiffs’ case. The Court also notes that despite having more than adequate 

opportunity to do so, Plaintiffs’ Counsel did not indicate at the hearing that Plaintiffs planned to 

reassert any collateral claims against the Carriers (whether couched as antitrust claims or as now 

pleaded—tortious interference claims). 

IV. CONCLUSION

Accordingly, the Court STAYS the above-captioned consolidated case until further order. 

The Court will schedule a hearing for the Parties to argue the pending motions to dismiss in the 

Antitrust Case, rule on those Motions, and then decide how to proceed with these cases. 

.

____________________________________

ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE SIGNED this 3rd day of January, 2012. SIGNED this 5th day of December, 2024.

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V. APPENDIX

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