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Pragmatus Av, LLC v. Facebook

February 6, 2012

PRAGMATUS AV, LLC,
PLAINTIFF,
v.
FACEBOOK, INC.,
DEFENDANT.



The opinion of the court was delivered by: Edward J. Davila United States District Judge

United States District Court Northern District of California

ORDER DENYING MOTION TO LIFT STAY; GRANTING MOTION TO CLARIFY THE COURT'S PRIOR 13 ORDER; GRANTING MOTION FOR ) LEAVE TO FILE SUPPLEMENTAL 14 DECLARATION

(Re: Docket Nos. 57, 59, 72)

For the

Pending before the court is Plaintiff Pragmatus AV, LLC's ("Pragmatus") (1) Motion To Lift Stay Due to the PTO's Confirmation That All Patent Claims are Valid and (2) Motion To 19 Enforce the Court's Scheduling Order and October 11, 2011 Order. The court finds that these 20 motions are appropriate for determination without oral argument. See Civil L.R. 7-1(b). For the 21 reasons discussed below, the motion to lift the stay is DENIED. The motion to enforce the court's 22 prior orders is deemed to be a motion to clarify the court's prior orders and is GRANTED. 23

I.BACKGROUND

On November 15, 2010, Pragmatus brought this action against Defendant Facebook, Inc. ("Facebook") alleging infringement of U.S. Patent No. 7,421,470 ("the '470 patent") and U.S. 26 Patent No. 7,433, 921 ("the '921 patent") in the Eastern District of Virginia. See Compl., Docket 27 No. 1. On January 21, 2011, Facebook moved to transfer venue pursuant to 28 U.S.C. § 1404(a).

See Mot. To Transfer, Docket No. 12. On April 29, 2011, the Eastern District of Virginia granted 2 the Defendant's motion and transferred this action to this court. See Order Granting Facebook's 3 Mot. To Transfer, Docket No. 25. On May 3, 2011, this action was assigned to the undersigned and 4 a case management conference was set for August 26, 2011. 5 On August 17, 2011, Facebook filed a separate request for inter partes reexamination for 6 each of the patents-in-suit pursuant to 35 U.S.C. § 311. See Decl. of Heidi L. Keefe in Supp. Mot. 7 To Stay Exs. A, B, Docket Nos. 45-1 and 45-2. On August 18, 2011, Facebook filed a Motion to 8 Stay Pending Inter Partes Reexamination. Mot. To Stay, Docket No. 44. On October 11, 2011, the 9 court granted Facebook's motion to stay and ordered Facebook to serve its invalidity contentions 10 no later than November 1, 2011. Order Granting Mot. To Stay, Docket No. 56. For the 17

On October 21, 2011, the PTO granted Facebook's request for re-examination of the '470 12 patent. See Decl. of Matthew R. Sheldon Ex. B, Docket No. 60-3 at 11. Also on October 21, 2011, 13 the PTO issued an Action Closing Prosecution finding that all claims of the '470 patent were 14 deemed to be patentable. Id. at 22. 15 On October 31, 2011, the PTO granted Facebook's request for re-examination of the '921 16 patent. See Decl. of Matthew R. Sheldon Ex. C, Docket No. 60-4 at 24. Also on October 31, 2011, the PTO issued an Action Closing Prosecution finding that all claims of the '921 patent were 18 deemed to be patentable. Id. at 10. 19 On November 1, 2011, Facebook served invalidity contentions but did not serve the 20 accompanying documents required by Patent L.R. 3-4(a). See Pl.'s Reply at 2:23-27, Docket No. 21 70. 22 On November 9, 2011, Pragmatus filed this (1) Motion To Lift Stay Due to the PTO's 23 Confirmation that All Patent Claims are Valid and (2) Motion to Enforce the Court's Scheduling 24 Order and October 11, 2011 Order. The motions were scheduled for oral argument on January 13, 25 2012. On January 10, 2012, the court took both motions under submission without oral argument 26 pursuant to Civil L.R. 7-1(b). See Clerk's Notice, Docket No. 73. 27

On December 1, 2011, the PTO entered a Right of Appeal Notice regarding the 2 reexamination of the '470 patent. Decl. of Mark W. Wasserman Ex A, Docket No. 72-2. On 3 December 15, 2011, the PTO entered a Right of Appeal Notice regarding the reexamination of the 4 '921 patent. Id. Ex. B., Docket No. 72-3. On December 29, 2011, Facebook filed a Notice of 5 Appeal in connection with the reexamination of the '470 patent and a Notice of Appeal in 6 connection with the reexamination of the '921 patent. Id. Ex. C and D, Docket Nos. 72-4 and 72-5. 7 On January 10, 2012, the parties requested leave to file a supplemental declaration regarding these 8 Right of Appeal Notices and the Notices of Appeal. See Docket No. 72. The motion to file a 9 supplemental declaration is GRANTED. 10

II.LEGAL STANDARDS

For the 17

"Any person at any time may file a request for reexamination by the [PTO] of any claim of 12 a patent on the basis of any prior art" consisting of patents or printed publications. 35 U.S.C. § 302 13 (amended 2011). "Congress instituted the reexamination process to shift the burden or 14 reexamination of patent validity from the courts to the PTO." Yodlee, Inc. v. Ablaise Ltd., Nos. C-15 06-07222 SBA, C-06-02451 SBA, C-07-01995 SB, 2009 WL 112857, at *2 (N.D. Cal. Jan. 16, 16 2009) (quoting Canady v. Erbe Elektromedizin GmbH, 271 F. Supp. 2d 64, 78 (D.D.C. 2002))

(quotation marks omitted). "Patent validity is a commonly asserted defense in litigation and courts 18 are cognizant of Congress's intention of utilizing the PTO's specialized expertise to reduce costly 19 and timely ...


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