III. ARGUMENT

A. A Stay Will Not Simplify the Issues For Trial

Here, Microsemi offers the same arguments that were previously rejected by this very same court in two previous motions to stay brought by other ’108 patent defendants in e.Digital Corporation v. Micron Consumer Products Group, Inc.,

D/B/A Lexar, Case No. 3:13-cv-02907-H-BGS, Dkt. No. 51 (S.D.Cal, Feb. 5,

2015). Specifically, Microsemi argues, “The second factor supports a stay because it is highly likely that the PTAB will cancel the asserted claim, and regardless of the PTAB’s final action, a stay will simplify the litigation.” (Microsemi Motion at

7:8-11). Microsemi echoes the same IPR statistics presented by the earlier

referenced Micron motion. (Id. at 12-17). However, this is pure speculation on

Microsemi’s part. Dane Techs., Inc. v. Gatekeeper Sys., Inc., 2013 U.S. Dist.

LEXIS 117718, *5-6 (D. Minn. Aug. 20, 2013) (finding fact that PTAB had

granted 89% of petitions to date unpersuasive, likelihood of review still

speculative). In fact, it is unclear whether review will be instituted and any review

is of uncertain scope. See, e.g. Audatex N. Am., Inc. v. Mitchell Int'l, Inc., 46 F.

Supp. 3d 1019, 2014 U.S. Dist. LEXIS 128145 at *1023-1024 (S.D. Cal. 2014);

see also Universal Elecs., Inc., 943 F.Supp.2d. 1028, 1035 (C.D. Cal. May 2,

2013) (“the Court is concerned that allowing the progress of its docket to depend

on the status of proceedings elsewhere can interfere with its obligation ‘to secure

the just, speedy, and inexpensive determination of every action’”) (internal citation

omitted); Overland v. BDT AG, Case No. 10-cv-1700, Dkt No. 56 at 7:12-24

(S.D.Cal., Dec. 10, 2013, J. Sammartino). Until the PTAB issues its decision on

whether to institute review, this Court can only speculate about whether or not a

stay would simplify the issues. Id. See also, In re Ameranth Patent Litig. Cases,

2013 U.S. Dist. LEXIS 185032 **13-14 (S.D. Cal. Nov. 26, 2013) and e.Digital v.

Micron, supra, Dkt # 51 at 4:15-19. The imposition of a stay, in and of itself, will

also not simplify the issues or streamline the trial. Id.

B. Possible Damage Resulting from a Stay Weighs Against a Stay

This factor weighs against granting a stay. Microsemi once again asserts the

same arguments previously rejected by this Court in Micron. Public policy favors

“expeditious resolutions of litigation.” Kahn, supra, 889 F.2d at 1080. Courts have

found the fact that the PTAB has not yet decided whether to grant IPR weighs

against granting a motion for a stay. See, e.g., See TPK Touch Solutions, Inc., v.

Wintek Electro-Optics Corporation, 2013 U.S. Dist. LEXIS 162521, 2013 WL

6021324, at *5 (N.D. Cal. Nov. 13, 2013); Sage Electrochromics, Inc. v. View,

Inc., 2015 U.S. Dist. LEXIS 1056, at **14-15 (N.D. Cal. Jan. 5, 2015) (denying

motion to stay because, among other reasons, the PTAB had not decided whether to open IPR proceedings); Aylus Networks, Inc. v. Apple, Inc., 2014 U.S. Dist.

LEXIS 157228 (N.D. Cal. Nov. 6, 2014).

As Federal Circuit Judge Bryson recently explained, sitting by designation in

the Eastern District of Texas, “[b]ecause it is speculative whether the PTAB will

grant the petition, that factor does not cut in favor of a stay.” Loyalty Conversion

Sys., 2014 U.S. Dist. LEXIS 102978, 2014 WL 3736514, at *2 (emphasis added).

See also Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., 2013 U.S. Dist. LEXIS

67790, at *7 (M.D.Fla., May 13, 2013) (“a stay of a patent infringement action is

not warranted when based on nothing more than the fact that a petition for inter

partes review was filed in the USPTO”).

This motion is therefore entirely premature as the Patent Trial and Appeal

Board (“PTAB”) has yet to decide whether it will even grant the petition.

Accordingly, it could be four or more months from the date the petition was filed(or approximately November 6, 2015) before the PTAB decides whether to grant the petition.

If the petition is denied, this case “will have been left languishing in the

Court’s docket with no discovery, no … claim construction, and no dispositive

motions.” See Automatic Mfg., supra, 2013 U.S. Dist. LEXIS 67790, at *7. The

risk of damage to e.Digital based on the speculative notion that the IPR could be

granted therefore weighs against granting a stay. See, Overland Storage, Inc. v.

BDT AG, supra, Case No. 10-cv-1700, Dkt No. 56 at 5:26-6:6; Warsaw

Orthopedic, Inc. v. Nuvasive, Inc., Case No. 12-cv-2738-CAB-MDD, Dkt No. 69

at 1:21-25 (S.D.Cal., May 30, 2013, J. Bencivengo) (denying motion to stay

because decision to grant inter partes review was pending); Universal Electronics

v. Universal Remote Control, Inc., supra, 943 F.Supp.2d. at 1035 (denying motion to stay and noting the lengthy delay possible because the inter partes review

petition had not yet been granted); Proctor & Gamble Co. v. Team Techs., Inc.,

Case No. 1:12-cv-552, 2013 U.S. Dist. LEXIS 128949, at *8-9 and n.1 (S.D. Ohio

Sept. 10, 2013) (denying motion to stay as premature where inter partes review

petition was not yet granted; collecting similar cases from other districts); Dane

Techs., Inc. v. Gatekeeper Sys., Inc., supra, 2013 U.S. Dist. LEXIS 117718, at *2

(denying stay before the USPTO makes a decision on a petition because “the Court

can only speculate as to whether the USPTO will review a patent and to what

extent”); Davol, Inc. v. Atrium Med. Corp., Case No.12-958-GMS, 2013 LEXIS

84533, at *6-7 (D. Del. June 17, 2013) (finding the fact that inter partes review had

not yet been granted weighed against granting stay).

Accordingly, the delay caused by a stay would “unduly prejudice” e.Digital

and would “present a clear tactical disadvantage.” Automatic Mfg., supra, 2013

U.S. Dist. LEXIS 67790, at *8. e.Digital should be able “to prosecute its claims, totake discovery, and to set its litigation positions, at least until such a time as theUSPTO takes an interest in reviewing the challenged claims.” Id. This factor

therefore weighs against a stay.

Finally, Defendants do not attempt to specifically allege any alleged

potential hardship to Defendants if the case were allowed to go forward other than broad, general references to “unnecessary expenditure,” and “unnecessary

resources.” (Microsemi Motion at 6:21-23 and 9:1-3.) This contention is entirely

speculative. See, Dane Techs., Inc. v. Gatekeeper Sys., Inc., supra, 2013 U.S. Dist.

LEXIS 117718, at *5-6 (finding fact that PTAB had granted 89% of petitions to

date unpersuasive, likelihood of review still speculative). Based on the foregoing,

this factor weighs against a stay.

IV. CONCLUSION

Based on the foregoing, Microsemi’s motion to stay pending its petition for

inter partes review is entirely speculative and premature. A stay would prejudice

e.Digital and is not in the interest of orderly justice. Microsemi’s assertions of

hardship are speculative and should be afforded little weight given the amount of

time and resources spent on the case thus far by both parties and the Court.

Microsemi’s motion to stay should therefore be denied.

Dated: July 20, 2015

HANDAL & ASSOCIATES

By: /s/Pamela C. Chalk

Anton N. Handal

Pamela C. Chalk

Gabriel G. Hedrick

Attorneys for Plaintiff

e.Digital Corporation