IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`KIRSCH RESEARCH AND
`DEVELOPMENT, LLC,
` Plaintiff,
`
`v.
`
`DUPONT DE NEMOURS, INC., E.I. DU
`PONT DE NEMOURS AND COMPANY,
` Defendants.
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`CIVIL ACTION NO. 5:20-CV-00057-RWS
`
`
`(LEAD CASE)
`
`v.
`
`ATLAS ROOFING CORPORATION,
` Defendant.
`
`§
`§
`§
`§
`§
`§
`
`
`CIVIL ACTION NO. 5:20-CV-00055-RWS
`
`(CONSOLIDATED CASE)
`
`v.
`
`FT SYNTHETICS INC.,
` Defendant.
`
`§
`§
`§
`§
`§
`
`
`
`CIVIL ACTION NO. 5:20-CV-00058-RWS
`
`(CONSOLIDATED CASE)
`ORDER
`Before the Court is Defendants’ Joint Motion to Stay Pending Inter Partes Review of the
`’482 Patent. Docket No. 163. For the reasons set forth below, the motion is DENIED.
`BACKGROUND
`On April 24, 2020, Plaintiff sued DuPont fo r infringement of U.S. Patent Nos. 6,308,482
`and 8,765,251, and it sued FTS for infringement of the ’482 Patent. The Court consolidated the
`cases at Defendants’ request. Docket No. 24. Plaintiff also su ed Atlas Roofing for infringement
`of the ’482 and ’251 Patents, which was similarly consolidated. Docket No. 64.
`Also, on April 24, 2020, Plaintiff filed a co mplaint with the In ternational Trade
`Commission that named DuPont as a respondent and accused the same Plaintiff products that are
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 1 of 5 PageID #: 9047
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 1
`
`
`
`
`
`
`
`Page 2 of 5
`at issue in this case of infringing the ’251 Patent. Docket No. 27-2. The ITC instituted an
`investigation on June 1, 2020, and Defendants requested that the Court stay this case pending the
`outcome of the ITC investigation. See Docket Nos. 22, 27. This Court granted a mandatory stay
`of the ’251 Patent and denied a discretionary stay as to the ’482 Patent, finding that: (1) prejudice
`to Plaintiff neither favored nor disfavored a stay; (2) a stay as to the ’482 Patent was not likely to
`simplify issues; and (3) Defendants’ prejudice did not support a stay. Docket No. 60. Defendants
`moved for reconsideration. Docket No. 87. Th e Court denied the motion on October 20, 2020.
`Docket No. 117.
` On February 18, 2021, the PTAB instituted an IP R on all 34 claims of the ’482 Patent in
`IPR2020-01389, brought by Owens Corning Roofing & Asphalt, LLC. Docket No. 162-1. On
`May 25, 2021, the PTAB instituted an IPR on all 34 claims of the ’482 Patent in IPR2021-00192,
`brought by GAF Materials LLC. Docket No. 259-1.
`On February 22, 2021, the ITC’s determination as to the ’251 Patent became final and
`Plaintiff requested that the Cour t lift the stay as to that patent. Dock et No. 164. Defendants
`opposed lifting the statutory stay, arguing the Court should in fact stay the entire case. Docket No.
`183. The Court lifted the statutory stay on th e ’251 Patent on March 3, 2021. Docket No. 185.
`The Court also set the ’251 Patent on a condensed schedule to algin it with the schedule set for the
`’482 Patent. A Markman hearing for both patents was held on May 12, 2021. Docket No. 250.
`The Court now addresses Defendants’ request for a discretionary stay. Although the
`motion was titled as a stay for the ’482 Patent, the arguments address placing the ’251 Patent under
`discretionary stay as well, and thus the Court a ddresses Defendants’ request as one to stay the
`entire case.
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 2 of 5 PageID #: 9048
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 2
`
`
`
`
`
`
`
`Page 3 of 5
`APPLICABLE LAW
`The Court has the inherent power to control its own docket, including the power to stay
`proceedings. Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); see also Ethicon v. Quigg, 849 F.2d
`1422, 1426 (Fed. Cir. 1988). How to best manage th e court’s docket “calls for the exercise of
`judgement, which must weigh competing inte rests and maintain an even balance.” Landis, 299
`U.S. at 254–55. The proponent of a stay bears the burden of establishing its need. Id. at 255. “In
`deciding whether to stay litigation pending reexamin ation, courts typically consider: (1) whether
`a stay will unduly prejudice or present a clear tactical disadv antage to the nonmoving party, (2)
`whether a stay will simplify the issues in question and trial of the case, and (3) whether discovery
`is complete and whether a trial date has been set.” Soverain Software LLC v. Amazon.com, Inc. ,
`356 F. Supp. 2d 660, 662 (E.D. Tex. 2005) (citing Xerox Corp. v. 3Com Corp. , 69 F. Supp. 2d
`404, 406 (W.D.N.Y. 1999)).
`DISCUSSION
`Defendants have not carried their burden to demonstrate the necessity of a stay.
`First, Plaintiff’s potential prejudice cuts against a stay. The Court has already held in this
`matter that “a stay could cause the loss of testimonial and documentary evidence and reduction in
`market share because Plaintiff and Defendants ar e direct competitors.” Docket No. 60 (citing
`Align Tech., Inc. v. 3Shape A/S , No. 17-1646-LPS-CJB, 2018 WL 4292675, at *3 (D. Del. Sept.
`7, 2018)). And, while the ’482 Patent has expired, th is Court has previously held that the mere
`fact that a plaintiff is not currently practicing a pate nt does not mean that, as a matter of law, it is
`not prejudiced by a substantial delay of its trial date. See Maxell, Ltd. v. Apple Inc., Case No. 5:19-
`cv-36-RWS, Docket No. 587 at 3 (E.D. Tex. Nov. 17, 2020); see also Rembrandt Wireless Techs.,
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 3 of 5 PageID #: 9049
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 3
`
`
`
`
`
`
`
`Page 4 of 5
`LP v. Samsung Elecs. Co., Case No. 2:13-cv-213-JRG-RSP, 2015 WL 627887, at *2 (E.D. Tex.
`Jan. 29, 2015). The prejudice factor accordingly weighs against a stay.
`Second, whether the stay is likely to simplify the issues also weighs against a stay. The
`Court has already found that th e two patents “are not related, do not share a specification or
`prosecution history and claim different subject matter.” Docket No. 60 at 4; see also Align Tech.,
`2018 WL 4292675, at *2 (“Overlapping subject matte r, without more—such as overlapping
`specifications, prosecution history, or a familial relationship—does not pr ovide much support for
`a stay.”). Further, this Court and others in the di strict have declined to grant a discretionary stay
`when not all claims in a case are subject to PTAB review, finding that proposed simplification by
`IPR is speculative. See Maxell, Case No. 5:19-cv-36-RWS, Do cket No. 587 at 5–6 (denying
`discretionary stay when only 8 of the 20 asserted claims were under review); see also Commc’ns
`LLC v. ZTE Corp. , No. 2:15-cv-349-JRG, 2017 WL 339639 9, at *2 (E.D. Tex. Jan. 17, 2017)
`(denying stay where only one of fi ve asserted patents were instit uted). Indeed, this Court has
`denied a discretionary stay where all claims we re under some form of review at the PTAB. See
`Maxell, Case No. 5:19-cv-36-RWS, Do cket No. 662 at 6–8 (E.D. Te x. Mar. 15, 2021) (denying
`stay motion where all claims were either under IPR or EPR); see also Ramot at Tel Aviv University
`Ltd. v. Cisco Systems, Inc., Case No. 2:19-cv-225-JRG, Docket No. 205 at 2 (E.D. Tex. Nov. 23,
`2020). This case has not reached even that stage. Here, only one of the two patents is subject to
`review, and the patents do not have overlapping subj ect matter. Accordingly, this factor weighs
`against a stay.
`Third, this case has moved past its earliest stages, and this factor weighs slightly against a
`stay. The Markman hearing in this matter has been completed. The two patents have been set on
`the same schedule after the mandato ry stay on the ’251 Patent was lifted. The stage of the case
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 4 of 5 PageID #: 9050
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 4
`
`
`
`
`
`
`
`Page 5 of 5
`thus weighs against a stay becau se “whether discovery is comple te and whether a trial date has
`been set[] weighs in favor of denying the stay.” Forgent Networks, Inc. v. Echostar Techs. Corp.,
`No. 6:06-CV-208 LED, 2006 WL 6922224, at *2 (E .D. Tex. Nov. 20, 2006) (“In addition, the
`parties have also fully briefed and argued the claim construction issues, and the Court is currently
`working on its claim construction order.”).
`“Given the resources that the parties and the Court have alr eady invested in this case,
`staying the case, based solely on speculation of what might possibly happen during reexamination,
`would be inefficient and inappropriate.” Soverain, 356 F. Supp. 2d at 663. Having considered the
`prejudice to Plaintiff, the speculative nature of any simplification of issues and stage of the case,
`the Court finds that the relevant factors weigh against granting a st ay at this time. Defendants’
`motion to stay is accordingly DENIED.
`.
`
`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
`So ORDERED and SIGNED this 7th day of July, 2021.
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 5 of 5 PageID #: 9051
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 5
`
`
`
`
`
`
`
`
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`KIRSCH RESEARCH AND
`DEVELOPMENT, LLC,
` Plaintiff,
`
`v.
`
`DUPONT DE NEMOURS, INC., E.I. DU
`PONT DE NEMOURS AND COMPANY,
` Defendants.
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`CIVIL ACTION NO. 5:20-CV-00057-RWS
`
`
`(LEAD CASE)
`
`v.
`
`ATLAS ROOFING CORPORATION,
` Defendant.
`
`§
`§
`§
`§
`§
`§
`
`
`CIVIL ACTION NO. 5:20-CV-00055-RWS
`
`(CONSOLIDATED CASE)
`
`v.
`
`FT SYNTHETICS INC.,
` Defendant.
`
`§
`§
`§
`§
`§
`
`
`
`CIVIL ACTION NO. 5:20-CV-00058-RWS
`
`(CONSOLIDATED CASE)
`ORDER
`Before the Court is Defendants’ Joint Motion to Stay Pending Inter Partes Review of the
`’482 Patent. Docket No. 163. For the reasons set forth below, the motion is DENIED.
`BACKGROUND
`On April 24, 2020, Plaintiff sued DuPont fo r infringement of U.S. Patent Nos. 6,308,482
`and 8,765,251, and it sued FTS for infringement of the ’482 Patent. The Court consolidated the
`cases at Defendants’ request. Docket No. 24. Plaintiff also su ed Atlas Roofing for infringement
`of the ’482 and ’251 Patents, which was similarly consolidated. Docket No. 64.
`Also, on April 24, 2020, Plaintiff filed a co mplaint with the In ternational Trade
`Commission that named DuPont as a respondent and accused the same Plaintiff products that are
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 1 of 5 PageID #: 9047
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 1
`
`
`
`
`
`
`
`Page 2 of 5
`at issue in this case of infringing the ’251 Patent. Docket No. 27-2. The ITC instituted an
`investigation on June 1, 2020, and Defendants requested that the Court stay this case pending the
`outcome of the ITC investigation. See Docket Nos. 22, 27. This Court granted a mandatory stay
`of the ’251 Patent and denied a discretionary stay as to the ’482 Patent, finding that: (1) prejudice
`to Plaintiff neither favored nor disfavored a stay; (2) a stay as to the ’482 Patent was not likely to
`simplify issues; and (3) Defendants’ prejudice did not support a stay. Docket No. 60. Defendants
`moved for reconsideration. Docket No. 87. Th e Court denied the motion on October 20, 2020.
`Docket No. 117.
` On February 18, 2021, the PTAB instituted an IP R on all 34 claims of the ’482 Patent in
`IPR2020-01389, brought by Owens Corning Roofing & Asphalt, LLC. Docket No. 162-1. On
`May 25, 2021, the PTAB instituted an IPR on all 34 claims of the ’482 Patent in IPR2021-00192,
`brought by GAF Materials LLC. Docket No. 259-1.
`On February 22, 2021, the ITC’s determination as to the ’251 Patent became final and
`Plaintiff requested that the Cour t lift the stay as to that patent. Dock et No. 164. Defendants
`opposed lifting the statutory stay, arguing the Court should in fact stay the entire case. Docket No.
`183. The Court lifted the statutory stay on th e ’251 Patent on March 3, 2021. Docket No. 185.
`The Court also set the ’251 Patent on a condensed schedule to algin it with the schedule set for the
`’482 Patent. A Markman hearing for both patents was held on May 12, 2021. Docket No. 250.
`The Court now addresses Defendants’ request for a discretionary stay. Although the
`motion was titled as a stay for the ’482 Patent, the arguments address placing the ’251 Patent under
`discretionary stay as well, and thus the Court a ddresses Defendants’ request as one to stay the
`entire case.
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 2 of 5 PageID #: 9048
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 2
`
`
`
`
`
`
`
`Page 3 of 5
`APPLICABLE LAW
`The Court has the inherent power to control its own docket, including the power to stay
`proceedings. Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); see also Ethicon v. Quigg, 849 F.2d
`1422, 1426 (Fed. Cir. 1988). How to best manage th e court’s docket “calls for the exercise of
`judgement, which must weigh competing inte rests and maintain an even balance.” Landis, 299
`U.S. at 254–55. The proponent of a stay bears the burden of establishing its need. Id. at 255. “In
`deciding whether to stay litigation pending reexamin ation, courts typically consider: (1) whether
`a stay will unduly prejudice or present a clear tactical disadv antage to the nonmoving party, (2)
`whether a stay will simplify the issues in question and trial of the case, and (3) whether discovery
`is complete and whether a trial date has been set.” Soverain Software LLC v. Amazon.com, Inc. ,
`356 F. Supp. 2d 660, 662 (E.D. Tex. 2005) (citing Xerox Corp. v. 3Com Corp. , 69 F. Supp. 2d
`404, 406 (W.D.N.Y. 1999)).
`DISCUSSION
`Defendants have not carried their burden to demonstrate the necessity of a stay.
`First, Plaintiff’s potential prejudice cuts against a stay. The Court has already held in this
`matter that “a stay could cause the loss of testimonial and documentary evidence and reduction in
`market share because Plaintiff and Defendants ar e direct competitors.” Docket No. 60 (citing
`Align Tech., Inc. v. 3Shape A/S , No. 17-1646-LPS-CJB, 2018 WL 4292675, at *3 (D. Del. Sept.
`7, 2018)). And, while the ’482 Patent has expired, th is Court has previously held that the mere
`fact that a plaintiff is not currently practicing a pate nt does not mean that, as a matter of law, it is
`not prejudiced by a substantial delay of its trial date. See Maxell, Ltd. v. Apple Inc., Case No. 5:19-
`cv-36-RWS, Docket No. 587 at 3 (E.D. Tex. Nov. 17, 2020); see also Rembrandt Wireless Techs.,
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 3 of 5 PageID #: 9049
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 3
`
`
`
`
`
`
`
`Page 4 of 5
`LP v. Samsung Elecs. Co., Case No. 2:13-cv-213-JRG-RSP, 2015 WL 627887, at *2 (E.D. Tex.
`Jan. 29, 2015). The prejudice factor accordingly weighs against a stay.
`Second, whether the stay is likely to simplify the issues also weighs against a stay. The
`Court has already found that th e two patents “are not related, do not share a specification or
`prosecution history and claim different subject matter.” Docket No. 60 at 4; see also Align Tech.,
`2018 WL 4292675, at *2 (“Overlapping subject matte r, without more—such as overlapping
`specifications, prosecution history, or a familial relationship—does not pr ovide much support for
`a stay.”). Further, this Court and others in the di strict have declined to grant a discretionary stay
`when not all claims in a case are subject to PTAB review, finding that proposed simplification by
`IPR is speculative. See Maxell, Case No. 5:19-cv-36-RWS, Do cket No. 587 at 5–6 (denying
`discretionary stay when only 8 of the 20 asserted claims were under review); see also Commc’ns
`LLC v. ZTE Corp. , No. 2:15-cv-349-JRG, 2017 WL 339639 9, at *2 (E.D. Tex. Jan. 17, 2017)
`(denying stay where only one of fi ve asserted patents were instit uted). Indeed, this Court has
`denied a discretionary stay where all claims we re under some form of review at the PTAB. See
`Maxell, Case No. 5:19-cv-36-RWS, Do cket No. 662 at 6–8 (E.D. Te x. Mar. 15, 2021) (denying
`stay motion where all claims were either under IPR or EPR); see also Ramot at Tel Aviv University
`Ltd. v. Cisco Systems, Inc., Case No. 2:19-cv-225-JRG, Docket No. 205 at 2 (E.D. Tex. Nov. 23,
`2020). This case has not reached even that stage. Here, only one of the two patents is subject to
`review, and the patents do not have overlapping subj ect matter. Accordingly, this factor weighs
`against a stay.
`Third, this case has moved past its earliest stages, and this factor weighs slightly against a
`stay. The Markman hearing in this matter has been completed. The two patents have been set on
`the same schedule after the mandato ry stay on the ’251 Patent was lifted. The stage of the case
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 4 of 5 PageID #: 9050
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 4
`
`
`
`
`
`
`
`Page 5 of 5
`thus weighs against a stay becau se “whether discovery is comple te and whether a trial date has
`been set[] weighs in favor of denying the stay.” Forgent Networks, Inc. v. Echostar Techs. Corp.,
`No. 6:06-CV-208 LED, 2006 WL 6922224, at *2 (E .D. Tex. Nov. 20, 2006) (“In addition, the
`parties have also fully briefed and argued the claim construction issues, and the Court is currently
`working on its claim construction order.”).
`“Given the resources that the parties and the Court have alr eady invested in this case,
`staying the case, based solely on speculation of what might possibly happen during reexamination,
`would be inefficient and inappropriate.” Soverain, 356 F. Supp. 2d at 663. Having considered the
`prejudice to Plaintiff, the speculative nature of any simplification of issues and stage of the case,
`the Court finds that the relevant factors weigh against granting a st ay at this time. Defendants’
`motion to stay is accordingly DENIED.
`.
`
`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
`So ORDERED and SIGNED this 7th day of July, 2021.
`Case 5:20-cv-00057-RWS Document 269 Filed 07/07/21 Page 5 of 5 PageID #: 9051
`Patent Owner, PayGeo, LLC - Ex. 2011, p. 5
`
`
`
`
`
`
`
`
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