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Invensas Corp. v. Samsung Electronics Co., Ltd.

United States District Court, D. Delaware

October 2, 2018

INVENSAS CORPORATION, Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG AUSTIN SEMICONDUCTOR, LLC, Defendants.

          MEMORANDUM OPINION

          Sherry R. Fallon Judge.

         I. INTRODUCTION

         Presently before the court in this patent infringement action is the motion to stay pending the resolution of two petitions for inter partes review ("IPR") filed by defendants Samsung Electronics Co., Ltd. and Samsung Austin Semiconductor, LLC (collectively, "Samsung").[1](D.I. 36) For the following reasons, Samsung's motion to stay is denied without prejudice.

         II. BACKGROUND

         On September 28, 2017, plaintiff Invensas Corporation ("Invensas") filed a complaint against Samsung asserting infringement of United States Patent Numbers 6, 232, 231 ("the '231 patent") and 6, 849, 946 ("the '946 patent") (collectively, the "patents-in-suit"). (D.I. 1) Invensas is the owner by assignment of the patents-in-suit. (Id. at ¶¶ 9-10) The patents-in-suit are entitled "Planarized Semiconductor Interconnect Topography and Method For Polishing a Metal Layer To Form Interconnect," and issued on May 15, 2001. (Id.) The patents-in-suit share a common specification and are directed to planarizing or flattening the surface of an "interconnect topography" in an integrated circuit. ('231 patent, col. 1:8-14)

         On January 29, 2018, the court entered a scheduling order, setting a fact discovery cutoff of February 1, 2019, an expert discovery cutoff of May 10, 2019, and a trial date of November 18, 2019. (D.I. 14) On February 20, 2018, the court entered a discovery stipulation permitting cross-use by the parties of all written discovery responses, document productions, and deposition testimony from a parallel action in the Eastern District of Texas, captioned Invensas Corp. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., C.A. No. 2:17-cv-670-RWS-RSP (E.D. Tex.) (the "Texas Action"). (D.I. 21) A Markman hearing was held in the Texas Action on August 22, 2018, and the deadline for completion of document production in the Texas Action passed on June 28, 2018. (D.I. 40, Ex. 6 at 3-4)

         On July 13, 2018, Samsung filed petitions for IPR challenging the validity of all asserted claims of the patents-in-suit with the U.S. Patent and Trademark Office ("USPTO"). (D.I. 40, Exs. 13-14) The Patent Trial and Appeal Board ("PTAB") will release its institution decisions regarding Samsung's IPR petitions in February 2019. 77 Fed. Reg. 48, 756, 48, 757 (Aug. 14, 2012). If the PTAB institutes proceedings on Samsung's petitions, final decisions on the merits of the petitions will issue by February 2020. 35 U.S.C. §§ 316(a)(l 1), 326(a)(l 1).

         In March and July 2017, the PTAB declined to institute IPR proceedings for the patents-in-suit based on petitions filed by Broadcom Limited. (D.I. 40, Exs. 9-10) The Broadcom petitions relied on different prior art combinations not cited in Samsung's petitions, although they relied on the same primary reference. (Id., Exs. 11-14) Following the PTAB's rejection of Broadcom's IPR petitions regarding the patents-in-suit, the U.S. International Trade Commission ("ITC") issued a decision on June 30, 2017 finding the '946 patent valid over the same primary references relied upon by Samsung in its IPR petitions, and infringed by over 2, 100 semiconductor devices. (D.I. 40, Ex. 15)

         III. LEGAL STANDARD

         A court has discretionary authority to grant a motion to stay. 454 Life Scis. Corp. v. Ion Torrent Sys., Inc., C.A. No. 15-595-LPS, 2016 WL 6594083, at *2 (D. Del. Nov. 7, 2016) (citing Cost Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985)). Courts consider three factors in deciding how to exercise this discretion: (1) whether a stay will simplify the issues for trial; (2) the status of the litigation, particularly whether discovery is complete and a trial date has been set; and (3) whether a stay would cause the non-movant to suffer undue prejudice from any delay or allow the movant to gain a clear tactical advantage. Id. (citing Advanced Microscopy Inc. v. Carl Zeiss Microscopy LLC, C.A. No. 15-516-LPS-CJB, 2016 WL 558615, at *1 (D.Del. Feb. 11, 2016)).

         IV. DISCUSSION

         After considering the three stay-related factors, the court denies Samsung's motion to stay, without prejudice to renew the motion if and when the IPR petitions are instituted.

         A. Simplification of Issues for Trial

         In support of its motion to stay, Samsung alleges that the PTAB is likely to institute proceedings, [2] and the IPR proceedings will narrow the issues remaining for trial as asserted claims are cancelled, narrowed, or invalidated. (D.I. 37 at 12-13) Samsung contends that, even if the PTAB affirms the patentability of the claims, Samsung will be estopped from arguing that those claims are invalid in the present litigation. (Id. at 13-14) Accordingly, Samsung argues that a ...


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