United States District Court, N.D. California
DEFENDANT'S MOTION TO STAY PENDING INTER PARTES REVIEW AND REEXAMINATION OF
PATENTS-IN-SUIT DOCKET NO. 98
EDWARD M. CHEN, District Judge.
Defendant Cardiocom has moved the Court to stay proceedings in this case pending the resolution of the inter partes review ("IPR") and ex parte reexamination proceedings requested by Cardiocom regarding the six patents-in-suit. Plaintiff Bosch opposes a stay. Having considered the parties' briefs and accompanying submissions, as well as the oral argument of counsel and all other evidence of record, the Court hereby GRANTS Cardiocom's motion.
I. FACTUAL & PROCEDURAL BACKGROUND
Bosch and Cardiocom are direct competitors in the telehealth market. Bosch provides two telehealth systems that enable healthcare providers to manage large populations of patients, remotely configure patient devices, and identify patients needing follow-up care. These features are at the heart of the patents-in-suit.
Of note, Bosch filed an initial lawsuit ("the First Case") against Cardiocom regarding infringement of six different telehealth patents used in the same product line. See generally Robert Bosch Healthcare Sys. v. Cardiocom, LLC, C-12-3864 EJD, 2012 WL 6020012 (N.D. Cal. Dec. 3, 2012). Judge Davila stayed the First Case in December 2012 pending Cardiocom's petitions for reexamination of the patents filed before the U.S. Patent Office ("PTO"). Id.
On April 26, 2013, Bosch filed the instant case in the Eastern District of Texas ("Texas Court") alleging infringement of U.S. Patent Nos. 7, 516, 192 ("the 192 Patent"), 7, 587, 469 ("the 469 Patent"), 7, 769, 605 ("the 605 Patent"), 7, 840, 420 ("the 420 Patent"), 7, 870, 249 ("the 249 Patent"), and 7, 921, 186 ("the 186 Patent"). Docket No. 1. These six patents are separate from those involved in the First Case, but relate to the same product line. Docket No. 98 at 8:4-6. Before answering Bosch's complaint, Cardiocom filed a motion on June 17, 2013 to transfer this case to California. Id. at 8:9-10. In July 2013, while Cardiocom's motion to transfer was pending, Cardiocom petitioned the Patent Trial and Appeal Board ("PTAB") to institute IPR proceedings to review the validity of all six patents asserted by Bosch in this case. Id. at 8:22-25.
Bosch opposed Cardiocom's petitions for IPR in October 2013. Id. at 10:6-7. In January 2014, the PTAB denied Cardiocom's petitions as to two patents in their entirety. Docket No. 109 at 5:3-7. As to the other four patents, the PTO instituted review as to certain claims and denied the petition as to the other claims. Id. at 5:7-18. Oral argument on these IPRs is scheduled to occur on September 14, 2014. Docket No. 98 at 10:13-14. The PTAB is under a statutory requirement to issue final determinations on the four instituted IPRs by January 28, 2015 (unless there is good cause to extend the period and then, by no more than six months). 35 U.S.C. § 316(a)(11).
Cardiocom's parent company, Medtronic, Inc., filed petitions for IPR of the 605, 249, and 469 patents on March 6, 2014 citing different prior art. Docket No. 109 at 6:1-3. Bosch's preliminary response as to these IPR requests is due July 29, 2014. Id. at 15:10-14. The PTO is scheduled to issue its decision whether to institute IPR on these petitions by October 29, 2014. Id.
Cardiocom filed requests for ex parte reexamination against the 605 and 469 patents on February 27 and March 7, 2014, respectively. Schultz Decl., Docket No. 99, ¶ 13. As with the new IPR petitions, the PTO has yet to rule on either of these requests. Docket No. 109 at 6:11-12. The status of Cardiocom's petitions for IPR or reexamination proceedings is summarized in the following chart:
As detailed above, a substantial proportion of the claims are subject to an instituted IPR proceeding or a pending request for IPR or reexamination. Docket No. 98 at 11:7-8.
On March 10, 2014 the Texas Court granted Cardiocom's motion to transfer this case. Docket No. 51. Following the transfer, this Court issued an order setting an initial case management conference for July 10, 2014 and ADR deadlines. Docket No. 53. The Court has not set a trial date or a hearing date for claim construction. Id. On May 15, 2014, Cardiocom moved to stay this case. Docket No. 109 at 4:17-19.
While this case was in Texas, neither party took depositions, conducted any discovery or filed a brief relating to claim construction. See Schultz Decl., Docket No. 104 at Exs. 9-12. This Court has not set deadlines for discovery, claim construction briefing, or related actions. Docket No. 53. Finally, neither party has engaged in any ADR proceedings in either Texas or this District. Id.
A. IPR Background and Procedure
The Leahy-Smith America Invents Act ("AIA") was introduced in 2012 to replace the former reexamination proceeding with an improved IPR process. Semiconductor Energy Lab. Co., Ltd. v. Chimei Innolux Corp., C-12-21, 2012 WL 7170593, at *1 (C.D. Cal. Dec. 19, 2012). The AIA's goal is "to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs." 37 C.F.R. §§ 42.100, et seq. The new IPR procedure "(1) reduce[s] to 12 months the time the PTO spends reviewing validity, from the previous reexamination average of 36.2 months; (2)  minimize[s] duplicative efforts by increasing coordination between district court litigation and [IPR]; and (3)  ...