United States District Court, N.D. California
ORDER GRANTING MOTION TO STAY RE: ECF No. 118
JON S. TIGAR, District Judge.
Before the Court is Defendant GSI Technology, Inc.'s Motion for Partial Stay Pending Inter Partes Review. ECF No. 118. For the reasons discussed below, the Court will GRANT the motion.
Cypress filed this action in May 2013, alleging that GSI infringes several of its patents. ECF No. 1. In August 2013, the Court consolidated with this case a patent-infringement case between the same parties that was originally filed in the U.S. District Court for the District of Minnesota. ECF No. 24. The patents at issue in the consolidated case are U.S. Patent Nos. 9, 967, 861 ("'861 Patent"); 7, 142, 477 ("'477 Patent"); 6, 651, 134 ("'134 Patent"); 6, 609, 839 ("'839 Patent"); 6, 292, 403 ("'403 Patent"); 6, 385, 128 ("'128 Patent"); and 6, 445, 645 ("'645" Patent), which concern static random access memory technology for computers, telecommunication devices, and other electronic devices. ECF No. 96 at 1. Cypress filed its patent infringement contentions on September 13, 2013, and amended them on September 30, 2013. ECF No. 118-1 & Ex. C.
GSI petitioned for, and the Patent Trial and Appeal Board ("PTAB") instituted, inter partes review of the '839, '403, '128, and '645 Patents.
Under the Leahy-Smith America Invents Act, codified at 35 U.S.C. § 311-19, a person who is not the owner of a patent may file with the U.S. Patent and Trademark Office ("PTO") a petition to institute inter partes review of the patent in order to cancel as unpatentable one or more claims of the patent. 35 U.S.C. § 311(a), (b). A petition for inter partes review will only be granted if "there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C § 314(a).
The final determination in an inter partes review proceeding must be issued no later than one year after the date on which the proceeding was instituted, unless the PTO extends the period for an additional six months for "good cause shown." Id . § 316(a)(11). If review results in a final written decision under 35 U.S.C. § 318(a), neither the petitioner nor his privies may assert in a civil action that the patent is invalid on any ground that the petitioner raised or could have raised during that inter partes review. Id . § 315(e).
On November 4, 2013, GSI filed petitions for inter partes review of all the '403 Patent claims Cypress asserts against GSI here. ECF No. 118 at 5. On November 27, 2013, GSI filed inter partes review petitions as to all the '839 Patent claims Cypress asserts against GSI in this case. Id . And on February 11, 2014, GSI filed petitions for inter partes review of all '645 and '128 Patent claims Cypress has asserted against GSI here. Id. at 5-6. Based on the dates that PTAB instituted review proceedings, final decisions on the petitions should be complete by April 16, 2015 for the '403 and '839 Patents, and by August 11, 2015 for the '128 and '645 Patents, unless good cause is shown and review is extended by six months.
GSI initially filed its motion for partial stay on April 24, 2014, eight days after PTAB instituted inter partes review of the '403 and '839 Patents. ECF No. 92; ECF No. 118-1, Exs. A, D. The Court denied the motion without prejudice and granted GSI leave to file a renewed motion by August 29, 2014. ECF No. 102. On July 29, 2014, the Court construed four terms of the '134 and '477 Patents. ECF No. 114.
Cypress concedes that the Court should grant a stay as to the '128 and '645 Patents, but contests the stay with respect to the '403 and '839 Patents. ECF No. 119 at 2. In any event, the Court will proceed with litigation regarding the '861, '477, and '134 Patents, and in particular, on October 28, 2014, the Court will hold a claim construction hearing with regard to the two claim terms of the '861 Patent that the parties have already briefed.
II. LEGAL STANDARD
"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) (internal citations omitted). In determining whether to stay a case pending review by the PTO, courts consider the following factors: (1) whether discovery in the case is complete and whether a trial date has been set; (2) whether a stay would 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 party. Cygnus Telecomms. Tech., LLC, Patent Litig., 285 F.Supp.2d 1022, 1023 (N.D. Cal. 2005); see also Universal Elecs., Inc. v. Universal Remote Control, Inc. , 943 F.Supp.2d 1028, 1030-31 (C.D. Cal. 2013) (applying the framework applicable to motions to stay pending reexamination by the PTO to motions to stay pending the newer inter partes review process). While case law supplies these general considerations, the Court ultimately must decide whether to issue a stay on a case-by-case basis. Asetek Holdings, Inc. v. Cooler Master Co., Ltd., No. 13-cv-00457-JST, 2014 WL 1350813, at *1 (N.D. Cal. Apr. 3, 2014).
A. Stage of ...