Malikie Innovations Ltd. v. MARA Holdings, Inc. (f/k/a Marathon Digital Holdings, Inc.) — Entry #94

Case 7:25-cv-00222-DC-DTG            Document 94        Filed 06/01/26     Page 1 of 4


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


MALIKIE INNOVATIONS LTD. and                     §
KEY PATENT INNOVATIONS LTD.,                     §
                                                 §
                                                 §
          Plaintiffs,                            §
                                                 §      CASE NO. 7:25-CV-00222-DC-DTG
v.                                               §
                                                 §
MARA HOLDINGS INC. (f/k/a                        §
MARATHON DIGITAL HOLDINGS,                       §
INC.),                                           §
                                                 §
         Defendant,                              §

            ORDER DENYING OPPOSED MOTION TO STAY (DKT. NO. 54)

       Pending before the Court is the defendant, MARA Holdings, Inc. (f/k/a Marathon Digital

Holdings, Inc.)’s opposed motion to stay this matter in light of ex parte reexaminations that the

defendant and a third party filed with the United States Patent and Trademark Office seeking

reexamination of the patents at issue. Dkt. No. 54. The defendant argues that staying the case

will simplify the issues before the Court and conserve judicial resources. Id. at 5–7. The

plaintiffs claim that a stay would cause them undue prejudice and indefinitely delay the case. See

Dkt. No. 61 at 3–10. Having considered each argument carefully, the Court finds that the motion

should be DENIED.

       Patent infringement suits are not automatically stayed pending the resolution of parallel

USPTO proceedings. See Kirsch Rsch. & Dev., LLC v. IKO Indus. Inc., No. 6:20-CV-00317-

ADA, 2021 WL 455610, at *2 (W.D. Tex. Oct. 5, 2021) (quoting Realtime Data, LLC v.

Rackspace US, Inc., No. 6:16-CV-00961-RWS-JDl, 2017 WL 772654, at *2 (E.D. Tex. Feb. 27,

2017)). Rather, courts must first determine if the stay’s benefits outweigh its inherent costs. Id.

(quoting EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-CV-81, 2006 WL 2501494, at *1 (E.D.


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Tex. July 14, 2006). To do so, courts generally weigh (1) whether a stay would unduly prejudice

or tactically disadvantage the non-movant; (2) the stage of the proceedings; and (3) whether a

stay would simplify the issues in this case. See id.; see also Worldwide Oilfield Mach., Inc. v.

Ameriforge Grp., Inc., No. H-13-3123, 2015 WL 12780757, at *1 (S.D. Tex. June 5, 2015)

(citing E-Watch, Inc. v. Lorex Canada, Inc., No. H-12-3314, 2013 WL 55425298, (S.D. Tex.

Sept. 26, 2013)).

       The parties dispute the potential prejudice occasioned by a stay. The defendant argues

that the plaintiffs will not be prejudiced by a stay because they do not compete with the

defendant, they seek only monetary damages, and they delayed filing this case for over two years

after the patents-at-issue were acquired. Dkt. No. 54 at 8. The plaintiffs, however, argue a stay

will prejudice their business of licensing their technology and force the plaintiffs to defend the

validity of their patents twice—before the patent office and in this lawsuit. Dkt. No. 61 at 9-10.

They also argue that they would be tactically disadvantaged because an ex parte reexam has no

estoppel effect, which would give the defendant two bites at the invalidity apple. Id. at 10.

Finally, they contend that a stay would deprive them of the opportunity to depose the defendant’s

experts who signed declarations in support of the defendant’s ex parte reexaminations. Dkt. No.

61 at 10.

       The Court finds that granting the stay would practically and tactically prejudice the

plaintiffs. As this Court has previously held, a patent owner that seeks solely monetary relief still

has an interest in enforcing its patent right. TC Tech. LLC v. T-Mobile USA, No. 6-20-CV-00899-

ADA, 2021 WL 8083373, at *2 (W.D. Tex. 2021) (citing MiMedx Grp., Inc. v. Tissue Transplant

Tech. Ltd., 2015 WL 11573771, at *2 (W.D. Tex. Jan. 5, 2015)). As noted by the plaintiff, there is

no estoppel effect to the ex parte reexaminations. Dkt. No. 61 at 5. This allows the defendant to


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     Case 7:25-cv-00222-DC-DTG            Document 94        Filed 06/01/26      Page 3 of 4


initiate the reexaminations, evaluate the plaintiffs’ arguments in those proceedings, and modify

their invalidity arguments in this case based on the result of the reexaminations. This effectively

gives the defendant “to bites at the [invalidity] apple.” Id. at 10 (citing EON Corp. IP Holdings,

LLC v. Sensus USA Inc., No. 6:09-CV-116, 2009 WL 9506927, at *2 (E.D. Tex. Dec. 18, 2009)).

Of less importance, but still relevant, is the argument that a stay of this case would effectively

foreclose discovery of the experts who signed declarations in support of the ex parte

reexaminations. The Court is persuaded that granting a stay would unduly prejudice and

tactically disadvantage the plaintiffs.

       The Court next considers whether a stay is appropriate at this stage of the proceedings.

The parties disagree on the reexamination’s estimated duration. Compare Dkt. No. 54 at 7 with

Dkt. No. 61 at 5–6. The defendant contends that the average length of an ex parte reexamination

is just over 15 months, but speculates that as the patents have expired, they could conclude faster.

Dkt. No. 54 at 7. The plaintiffs counter by noting that the that the average duration of

reexaminations appealed to the PTAB is 27.33 months. Dkt. No. 61 at 6. Either assumption

would carry the stay past the current trial date of March 1, 2027. See Dkt. No. 50. From the

record before it, the Court concludes that the proposed stay would delay the scheduled trial date,

and so this factor weighs against the defendant’s motion.

       The most important factor before the Court is whether the reexamination will simplify the

issues in this case. See Impinj, Inc. v. NXP USA, Inc., No. 6:21-CV-00530-ADA, 2023 WL

7476358, at *4 (W.D. Tex. May 18, 2023) (citing NFC Tech. LLC v. HTC Am., Inc., No. 2:13-

CV-01058, 2015 WL 1069111, at *4, *5 (E.D. Tex. Mar. 11, 2015)). The defendant speculates

that reexamination proceedings are highly likely to cancel some of the asserted claims and

provide guidance about the scope of the claims for claim construction. Dkt. No. 54 at 5. The


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plaintiffs note that unlike an inter partes reexam, the defendant neither bound nor estopped by an

ex parte reexamination. Dkt. No. 61 at 5. This lack of estoppel combined with the potential

adjustment to its invalidity case based on file history created during the reexaminations

persuades the Court that a stay is unlikely to simplify the case. The parties have already

exchanged preliminary infringement and invalidity contentions, the Court has already conducted

a Markman hearing and entered its claim construction order in this case, fact discovery has

opened, and the case is on track for trial in March of 2027. See Dkt. Nos. 50 & 80.

       Considering the factors, the Court concludes that the facts of this case do not warrant a

stay. Therefore, the Court DENIES the defendant’s motion (Dkt. No. 54).

SIGNED this 1st day of June, 2026.


                                     DEREK T. GILLILAND
                                     UNITED STATES MAGISTRATE JUDGE


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