Redstone Logics LLC v. Qualcomm Inc. — Entry #62: Opposed MOTION to Stay Case Pending the Ex Parte Reexamination by Qualcomm Inc., Qualcomm Technologies, Inc

Case 7:24-cv-00231-ADA   Document 62   Filed 06/04/26   Page 1 of 15


                   IN THE UNITED STATES DISTRICT COURT
                    FOR THE WESTERN DISTRICT OF TEXAS
                         MIDLAND/ODESSA DIVISION

REDSTONE LOGICS LLC,

            Plaintiff,

v.
                                            Case No. 7:24-cv-00231-ADA
QUALCOMM INC.; QUALCOMM
TECHNOLOGIES, INC.,

            Defendants.


                  DEFENDANTS’ OPPOSED MOTION TO STAY


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                                              TABLE OF CONTENTS


                                                                                                                                   Page

I.     INTRODUCTION .............................................................................................................. 1

II.    BACKGROUND ................................................................................................................ 2

III.   LEGAL STANDARD ......................................................................................................... 2

IV.    ARGUMENT ...................................................................................................................... 3

                 A. A Stay Will Not Unduly Prejudice Redstone, But Proceeding Would
                    Prejudice Qualcomm. .......................................................................................3

                 B. The Reexamination Could Moot This Case by Cancelling All Asserted
                    Claims. ..............................................................................................................5

                 C. The Stage of This Case Favors a Stay. .............................................................6

V.     CONCLUSION ................................................................................................................... 7


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                                               TABLE OF AUTHORITIES

                                                                                                                               Page(s)

Cases

Barnes & Noble, Inc. v. LSI Corp.,
   849 F. Supp. 2d 925 (N.D. Cal. 2012) .......................................................................................4

Crossroads Sys., Inc. v. Dot Hill Sys. Corp.,
   No. A-13-CA-1025-SS, 2015 WL 3773014 (W.D. Tex. June 16, 2015) ..............................3, 5

Destination Maternity Corp. v. Target Corp.,
   12 F. Supp. 3d 762 (E.D. Penn. 2014) .......................................................................................6

Eastman Kodak Co. v. Goodyear Tire, & Rubber Co.,
   114 F.3d 1547 (Fed. Cir. 1997), abrogated on other grounds by Cybor Corp.
   v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) ......................................................4

Joy Mfg. Co. v. Nat’l Mine Serv. Co, Inc.,
   810 F.2d 1127 (Fed. Cir. 1987)..................................................................................................2

Katana Silicon Techs. LLC v. GlobalFoundries, Inc.,
   No. 1:22-CV-852-RP, 2024 WL 5169808 (W.D. Tex. Apr. 11, 2024) .....................................3

Landis v. N. Am. Co.,
   299 U.S. 248 (1936) ...................................................................................................................2

LELO, Inc. v. Standard Innovation (US) Corp.,
   No. 13-CV-01393-JD, 2014 WL 2879851 (N.D. Cal. June 24, 2014) ......................................5

Polaris Powerled Techs., LLC v. Dell Techs. Inc.,
   No. 1:22-CV-0973-RP, 2023 WL 5282381 (W.D. Tex. Aug. 15, 2023) ..............................3, 5

Redstone Logics, LLC. v. Advanced Micro Devices, Inc.,
   No. 7:25-cv-00182-DC-DTG.....................................................................................................2

Redstone Logics LLC v. Apple Inc.,
   No. 7:25-cv-00183-ADA (W.D. Tex.), Dkt. 45.....................................................................1, 6

Segin Sys., Inc. v. Stewart Title Guar. Co.,
   30 F. Supp. 3d 476 (E.D. Va. 2014) ..........................................................................................3

Smartflash LLC v. Apple Inc.,
   621 F. App’x 995 (Fed. Cir. 2015) ............................................................................................3

Soverain Software LLC v. Amazon, Inc.,
   356 F. Supp. 2d 660 (E.D. Tex. 2005) .......................................................................................3


                                                                    ii


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VirtualAgility Inc. v. Salesforce.com, Inc.,
    759 F.3d 1307 (Fed. Cir. 2014)..............................................................................................3, 5

Zomm, LLC v. Apple Inc.,
   391 F. Supp. 3d 946 (N.D. Cal. 2019) .......................................................................................6

Rules and Statutes

Rule 12 .............................................................................................................................................2


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                              TABLE OF EXHIBITS


Short Name       Description
Green Decl.      Declaration of Eric C. Green in Support of Defendants’ Motion to Stay
Exhibit 1        Order Granting Request for Ex Parte Reexamination, dated March 6,
                 2026
Exhibit 2        Redstone’s Final Infringement Contentions, dated August 4, 2025
Exhibit 3        “Ex Parte Reexamination Filing Data” from the U.S. Patent and
                 Trademark Office
Exhibit 4        Excerpts of Advanced Micro Devices, Inc.’s Request for Ex Parte
                 Reexamination of U.S. Patent No. 8,549,339 in In re Patent of Wolfe, et
                 al., dated December 9, 2025
Exhibit 5        Redstone’s Response to Qualcomm’s Interrogatory No. 10, excerpted
                 from its Second Supplemental Objections and Responses to Defendants’
                 First Set of Interrogatories (Nos. 1-16)
Exhibit 6        Qualcomm’s Response to Redstone’s Interrogatory No. 3, excerpted
                 from its March 26, 2026 Third Supplemental Objections and Responses
                 to Redstone’s First Set of Interrogatories (Nos. 1-15)


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I.        INTRODUCTION

          Defendants Qualcomm Incorporated and Qualcomm Technologies, Inc., (collectively,

“Qualcomm”) respectfully request that the Court stay this case pending the ex parte reexamination

of the only patent in this case—U.S. Patent No. 8,549,339 (“the ’339 patent”). 1 That reexamination

covers every claim Redstone Logics LLC (“Redstone”) asserts. Compare Ex. 2 1 at 18, with Ex. 2.

The reexamination may therefore resolve this case.

          A stay is particularly appropriate in this case for several reasons:

          First, the reexamination is likely to materially affect this case. The request has already been

granted, and the United States Patent & Trademark Office (“PTO”) is reexamining all asserted

claims of the asserted patent. Once the PTO grants a request for reexamination, it cancels or

changes the asserted claims in 78.1% of cases. See Ex. 3. Here, the PTO granted reexamination on

six separate substantial new questions. See Ex. 1. If the PTO cancels the asserted claims, there will

be no case to try. Even if some claims of the ’339 patent are not canceled, the reexamination could

materially simplify the case by canceling the asserted claims, amending claims, or determining

that the scope of one or more claims is affected by the prosecution record.

          Second, there would be little, if any, prejudice to Redstone resulting from a stay. Redstone

does not compete with Qualcomm or sell any products practicing the ’339 patent. See generally

Third Am. Compl., Dkt. 41; Ex. 5 (Redstone’s response to Qualcomm’s damages interrogatory).

Further, Redstone seeks monetary relief. See Third Am. Compl., Dkt. 41 ¶ 16. If any asserted claim

survives reexamination, Redstone can still seek damages.

          Third, this case remains at a stage where a stay would preserve resources rather than waste


1
 Apple Inc. filed a motion to stay on similar grounds in Redstone Logics LLC v. Apple Inc., No.
7:25-cv-00183-ADA (W.D. Tex.), Dkt. 45.
2
    Citations to “Ex.” refer to exhibits attached to the Declaration of Eric C. Green (“Green Decl.”).


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them. Discovery is still in progress, and there is no trial date currently scheduled. The Court’s

involvement thus far has been limited to Rule 12 and Markman proceedings and a handful of

discovery disputes, but Qualcomm anticipates the need to move for summary judgment of at least

non-infringement and—based on Redstone’s representations—Daubert proceedings to preclude

Redstone’s impermissible damages theories. By staying this case, the Court’s burden in addressing

those and other pretrial motions is potentially eliminated.

II.    BACKGROUND

       Redstone filed this action in September 2024, 11 years after the ’339 patent issued and nine

years after the first Qualcomm product allegedly using the accused functionality was announced.

Dkt. 1-1; Ex. 6. On December 9, 2025, Advanced Micro Devices (“AMD”) 3 filed a request for ex

parte reexamination of the ’339 patent. Ex. 4. The request challenges every claim Redstone asserts

against Qualcomm in this litigation. Compare Ex. 4 at 1, with Ex. 2. On March 6, 2026, the PTO

granted the request and ordered reexamination of all asserted claims. Ex. 1.

III.   LEGAL STANDARD

       “[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.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). In patent cases, courts

commonly consider three familiar factors in deciding whether to order a stay: “(1) whether a stay

will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2) whether

a stay will simplify the issues in question and trial of the case; and (3) whether discovery is


3
  AMD and Redstone have since resolved their litigation through settlement. See Redstone Logics,
LLC. v. Advanced Micro Devices, Inc., No. 7:25-cv-00182-DC-DTG (ECF Nos. 37 and 40). As
the name implies, ex parte reexaminations may continue after settlement, because once the USPTO
institutes reexamination, the “requestor[] has no future role to play” in the proceeding. Joy Mfg.
Co. v. Nat’l Mine Serv. Co, Inc., 810 F.2d 1127, 1130 (Fed. Cir. 1987).


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complete and whether a trial date has been set.” Soverain Software LLC v. Amazon, Inc., 356 F.

Supp. 2d 660, 662 (E.D. Tex. 2005).

       This Court has granted stays under circumstances analogous to those present here—where

an ordered reexamination covers all asserted claims of the asserted patent. See, e.g., Katana Silicon

Techs. LLC v. GlobalFoundries, Inc., No. 1:22-CV-852-RP, 2024 WL 5169808, at *3 (W.D. Tex.

Apr. 11, 2024) (granting motion to stay pending ex parte reexamination following order granting

EPR where no undue prejudice existed).

IV.    ARGUMENT

       A.      A Stay Will Not Unduly Prejudice Redstone, But Proceeding Would Prejudice
               Qualcomm.

       A stay pending the ordered reexamination will not unduly prejudice Redstone. 4 Delay

alone is not undue prejudice, particularly where any alleged injury can be addressed through

damages if the asserted claims survive reexamination. Polaris Powerled Techs., LLC v. Dell Techs.

Inc., No. 1:22-CV-0973-RP, 2023 WL 5282381, at *4 (W.D. Tex. Aug. 15, 2023) (“Polaris’s

remedy in this case is monetary damages, and a stay will not adversely impact its ability to collect

damages for any injury.”); Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. A-13-CA-1025-SS,

2015 WL 3773014, at *2 (W.D. Tex. June 16, 2015) (“[M]ere delay in collecting [monetary]

damages does not constitute undue prejudice.”). Redstone does not compete with Qualcomm. See

generally Third Am. Compl., Dkt. 41; Ex. 5 (Redstone’s response to Qualcomm’s damages


4
  Similarly, Redstone will not face a “clear tactical disadvantage” if a stay is implemented. Courts
have found that such a disadvantage is present, for instance, where a stay would afford a party
“two separate opportunities in two separate forums to challenge the validity of Plaintiff’s patent.”
See Smartflash LLC v. Apple Inc., 621 F. App’x 995, 1003 (Fed. Cir. 2015) (citing Segin Sys., Inc.
v. Stewart Title Guar. Co., 30 F. Supp. 3d 476, 484 (E.D. Va. 2014)). Alternatively, a clear
disadvantage may arise where a party deliberately withholds prior art from a PTAB petition to
preserve it for district court litigation in the event the petition fails. See VirtualAgility Inc. v.
Salesforce.com, Inc., 759 F.3d 1307, 1320 (Fed. Cir. 2014). No such circumstance is present here.


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interrogatory). Thus, if any asserted claim survives reexamination, Redstone can still seek

damages.

       Redstone’s own delay further undercuts any claim of prejudice. The ’339 patent issued in

2013 (see Dkt. 1-1), and Qualcomm’s earliest identified U.S. order of an accused product was

August 2015. Ex. 6 (Qualcomm’s March 6, 2026 Supplemental Response to Redstone’s

Interrogatory No. 3). Yet Redstone and its predecessors in interest delayed until September 2024

to bring this case. Dkt. 1. That history is inconsistent with any claim that a stay pending

reexamination would cause undue prejudice. And while it is true that Redstone itself only obtained

the ’339 Patent in 2022, the delay of its predecessors in interest are fairly attributable to Redstone.

See Eastman Kodak Co. v. Goodyear Tire, & Rubber Co., 114 F.3d 1547, 1559 (Fed. Cir. 1997)

(in the context of a claim of laches, “Zimmer’s actions prior to the assignment of the patent rights

are imputed to Eastman. A patentee cannot avoid the consequences of his laches by transferring

the patent.”), abrogated on other grounds by Cybor Corp. v. FAS Technologies, Inc., 138 F.3d

1448 (Fed. Cir. 1998); Barnes & Noble, Inc. v. LSI Corp., 849 F. Supp. 2d 925, 931 (N.D. Cal.

2012) (“[A prior assignee’s] conduct may be imputed to [the patentee] for at least some theories

of unenforceability of patent rights, including laches, estoppel, and inequitable conduct” and

collecting cases).

       By contrast, proceeding now would impose real and avoidable prejudice on Qualcomm.

Without a stay, Qualcomm would be forced to continue litigating discovery, invalidity, non-

infringement, damages, and pretrial issues based on claims whose validity and scope are under

active reexamination. If the PTO cancels or changes the asserted claims, as happens 78.1% of the

time, then the resources spent in this Court will have been wasted and Qualcomm—and

Redstone—may face the risk of duplicative or inconsistent proceedings involving the scope and


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validity of the claims. That risk is especially acute because the prosecution history is actively

developing during the reexamination. Avoiding precisely that prejudice and risk of inconsistency

is one reason courts stay patent cases pending resolution of reexamination requests. See Polaris,

2023 WL 5282381, at *4; TC Tech., 2021 WL 8083373, at *2–3; Crossroads Sys., 2015 WL

3773014, at *3 (all focusing on conservation of parties’ and the Court’s resources).

       B.      The Reexamination Could Moot This Case by Cancelling All Asserted Claims.

       The second factor strongly favors a stay because the ordered reexamination covers every

asserted claim. This is not a case where the PTO is reviewing only some asserted claims or issues

peripheral to the litigation. The PTO is reexamining the same claims Redstone asks this Court to

adjudicate.

       If the PTO cancels the asserted claims, there will be no case to try. That is the ultimate

simplification. Even if the PTO does not cancel every asserted claim, the reexamination may still

substantially simplify the case. Quartz Auto, Dkt. 125, at *3 (quoting LELO, Inc. v. Standard

Innovation (US) Corp., No. 13-CV-01393-JD, 2014 WL 2879851, at *3 (N.D. Cal. June 24, 2014))

(“The standard is simplification of the district court case, not complete elimination of it[.]”). The

PTO may issue some rejections or create a prosecution record bearing on claim scope. Redstone

may also amend claims, which could affect infringement, invalidity, damages, and intervening-

rights issues. Should trial go forward on claims that are ultimately amended or invalidated, the

efforts of the Court, the parties, and the jury would be for naught.

       The PTO’s published statistics make it clear that there is a significant chance of

simplification. As discussed above, in more than three quarters of completed third-party requested

ex parte reexaminations, the certificate does not confirm all claims. Ex. 3 at 2. Where, as here,

every asserted claim is under reexamination, that likelihood of claim cancellation or change

strongly favors a stay. Polaris, 2023 WL 5282381, at *3 (quoting VirtualAgility Inc. v.


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Salesforce.com, Inc., 759 F.3d 1307, 1314 (Fed. Cir. 2014)) (finding review of all claims of the

only asserted patent “weighs heavily in favor of the stay”).

          Redstone may contend, as it did in its opposition to Apple’s Motion to Stay, that if some,

but not all, claims of the ’339 Patent are changed or canceled, Redstone can change its infringement

allegations to “avoid” the changed or canceled claims. See Redstone Logics LLC v. Apple Inc., No.

7:25-cv-00183-ADA (W.D. Tex.), Dkt. 49, at 3–4. But Redstone’s argument demonstrates

precisely why this case should be stayed—if the target is moving as Redstone suggests, a stay until

the reexamination has concluded is the most appropriate and efficient solution.

          C.     The Stage of This Case Favors a Stay.

          The stage of the case also favors a stay. Fact discovery is ongoing. Expert discovery has

not begun and does not begin for months. And no trial date is currently set. At base, this is a good

time to stay this case because the parties and the Court have not yet invested the resources that

might make a stay less efficient. See Zomm, LLC v. Apple Inc., 391 F. Supp. 3d 946, 956 (N.D.

Cal. 2019) (stage of the litigation favored a stay where “[n]o expert discovery has been conducted,

no substantive motions have been filed, and no trial date has been set.”); Destination Maternity

Corp. v. Target Corp., 12 F. Supp. 3d 762, 771 (E.D. Penn. 2014) (stage of the litigation favored

a stay where “fact and expert discovery is nowhere near complete” and “a trial date is not set”).

          Staying the case now would avoid the most burdensome and expensive phases of patent

litigation, including expert reports, depositions, dispositive motions practice, pretrial filings, and

trial preparation. Additionally, Qualcomm anticipates the need for the Court to resolve substantial

pre-trial briefing, including, at least, a motion for summary judgment of non-infringement and

damages-related Daubert motions. Staying the case now will therefore maximize the savings to

the Court and the parties while the PTO reexamines every asserted claim of the only asserted

patent.


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        The absence of a current trial date also supports a stay. Given the logistical difficulties of

scheduling a patent jury trial, it is very likely that the median certificate-issuance of July 2027 will

occur prior to a scheduled trial date. Further, certificate issuance is not the only relevant milestone.

Substantive PTO activity may occur before then, and may itself simplify the case by addressing

whether the asserted claims survive, whether Redstone amends them, and whether the prosecution

record affects their scope. The fact that no trial date has yet been set makes a stay at this time

particularly appropriate.

V.      CONCLUSION

        For the foregoing reasons, Qualcomm respectfully requests that the Court stay this action

pending the ordered reexamination concerning the ’339 patent. A stay will not unduly prejudice

Redstone, will conserve judicial and party resources, and is likely to eliminate or substantially

simplify this case.


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Date: June 2, 2026              Respectfully submitted,

                                By:       Daniel S. Leventhal

                                Richard S. Zembek (SBN 00797726)
                                richard.zembek@nortonrosefulbright.com
                                Daniel S. Leventhal (SBN 24050923)
                                daniel.leventhal@nortonrosefulbright.com
                                NORTON ROSE FULBRIGHT US LLP
                                1550 Lamar Street, Suite 2000
                                Houston, TX 77010
                                Telephone: (713) 651-5151
                                Fax: (713) 651-5246

                                Eric C. Green (SBN 24069824)
                                eric.green@nortonrosefulbright.com
                                Brett A. McKean (SBN 24057994)
                                brett.mckean@nortonrosefulbright.com
                                NORTON ROSE FULBRIGHT US LLP
                                98 San Jacinto Boulevard, Suite 1100
                                Austin, Texas 78701
                                Telephone: (512) 474-5201
                                Fax: (512) 536-4598

                                COUNSEL FOR DEFENDANTS QUALCOMM
                                INCORPORATED AND QUALCOMM
                                TECHNOLOGIES, INC.


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                             CERTIFICATE OF CONFERENCE

       I certify that on June 1, 2026, the parties met and conferred via teleconference, and counsel

for Redstone indicated it opposes this motion.


                                                 By: Daniel S. Leventhal
                                                     Daniel S. Leventhal


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                                CERTIFICATE OF SERVICE

       I certify that on June 4, 2026, I electronically filed the foregoing with the Clerk of Court

using the CM/ECF system, which will send notification of such filing to all counsel of record.


                                                 By: Daniel S. Leventhal
                                                     Daniel S. Leventhal


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