ORDER GRANTING IN PART AND DENYING IN PART MOTION TO STAY PENDING INTER PARTES REVIEW
WILLIAM ALSUP, District Judge.
In this patent infringement action, defendant moves to stay pending inter partes review. For the reasons stated below, the motion is GRANTED IN PART AND DENIED IN PART.
In October 2012, Evolutionary Intelligence, LLC filed a complaint alleging infringement of U.S. Patent Nos. 7, 010, 536 (the "536 patent") and 7, 702, 682 (the "682 patent") in the Eastern District of Texas. Evolutionary asserts that Apple, Inc. infringes claims 1-16 of the 536 patent and claims 1-11, 14-23 of the 682 patent - a total of 37 asserted claims (Opp. 3). Evolutionary also filed eight other actions alleging infringement of the same two patents. Evolutionary does not currently practice the claimed technology, but Incandescent, Inc., a non-party, is "currently developing a web browser product that will ultimately practice the technology of the Asserted Patents" (McCarthy Decl. Exh. E, De Angelo Decl. ¶ 5). In February 2013, after an amended complaint was filed, Apple filed an answer and asserted four counterclaims. The counterclaims seek declaratory judgment of non-infringement and invalidity of the 536 and 682 patents.
During July to September 2013, the nine actions were transferred to this district. This action was transferred in September. An October 8 order denied relating the nine actions. Evolutionary Intelligence, LLC v. Yelp, Inc., No. 4:13-cv-03587-DMR, Dkt. No. 82 (N.D. Cal. Oct. 8, 2013).
In October 2013, Apple filed six petitions for inter partes review by the new United States Patent and Trademark Office Patent Trial and Appeal Board ("PTAB"), collectively challenging the validity of all of the asserted claims. Evolutionary's responses by the PTAB will be complete by January 23, 2014 (Br. 3). Any decision to institute trial on the petitions (or deny review) will likely issue by April 2014. 35 U.S.C. 314(b). A final determination shall issue within one year (unless there is good cause to extend the period by no more than six months). 35 U.S.C. 316(a)(11). That is, a final determination will likely issue by April 2015. Yelp, Inc., Twitter, Inc., and Facebook, Inc. have also filed petitions for inter partes review of the asserted patents. The following chart summarizes the petitions.
Case Number Patent and Claims Entity IPR2014-00082 536 patent claims 1, 3-15 Apple IPR2014-00083 536 patent claims 1, 3-15 Apple IPR2014-00085 536 patent claims 2-14 and 16 Apple IPR2014-00086 536 patent claims 2-14 and 16 Apple IPR2014-00092 536 patent claims 1-16 (all claims) Yelp and Twitter IPR2014-00093 536 patent claims 15 and 16 Facebook IPR2014-00079 682 patent claims 1-23 (all claims) Apple IPR2014-00080 682 patent claims 1-23 (all claims) Apple
In November and December 2013, defendants in seven actions moved to stay pending inter partes review. Yelp, Dkt. No. 91 (noticed for Dec. 18); Evolutionary Intelligence, LLC v. Apple, Inc., No. 3:13-cv-04201-WHA, Dkt. No. 111 (noticed for Jan. 9); Evolutionary Intelligence, LLC v. LivingSocial, Inc., No. 3:13-cv13-04205-WHO, Dkt. No. 82 (noticed for Jan. 15); Evolutionary Intelligence, LLC v. Facebook, Inc., No. 3:13-cv-04202-SI, Dkt. No. 128 (noticed for Jan. 24); Evolutionary Intelligence, LLC v. Foursquare Labs, Inc., No. 3:13-cv-04203-MMC, Dkt. No. 89 (noticed for Jan. 24); Evolutionary Intelligence, LLC v. Groupon, Inc., No. 3:13-cv-04204-SI, Dkt. No. 96 (noticed for Jan. 24); Evolutionary Intelligence, LLC v. Twitter, Inc., No. 3:13-cv-04207-JSW, Dkt. No. 95 (noticed for March 7).
A December 18 order granted Yelp's motion to stay pending inter partes review (Dkt. No. 108).
Apple requests a stay pending resolution of the inter partes review petitions filed with the United States Patent and Trademark Office Patent Trial and Appeal Board, or alternatively, a temporary stay pending the PTAB's decision on whether to institute trial on Apple's petitions.
"Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination." Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (citation omitted). In determining whether to grant a stay pending reexamination, courts consider: (1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving ...