United States District Court, C.D. California
UNU ELECTRONICS INC., ET AL
For Plaintiffs: Paul Stewart.
For Defendants: Kainoa Asuega, Nicholas Lee.
The Honorable CHRISTINA A. SNYDER, United States District Judge.
Proceedings: DEFENDANT'S MOTION TO STAY ACTION PENDING RESOLUTION OF EX PARTE REEXAMINATION PROCEEDINGS BEFORE THE U.S. PATENT AND TRADEMARK OFFICE (ECF No. 61, filed October 29, 2014)
I. INTRODUCTION AND BACKGROUND
This case concerns alleged infringement of intellectual property rights pertaining to plaintiff's " juice pack" mobile telephone battery packs. On October 29, 2013, plaintiff " mophie, Inc." (hereinafter " plaintiff" or " mophie") filed a complaint against defendant " uNu Electronics, Inc." (" defendant") for trademark infringement, false designation of origin, trademark dilution, trade dress infringement, unfair competition, and copyright infringement. ECF No. 1. On June 25, 2014, plaintiff filed the operative First Amended Complaint (" FAC"), which added a claim for patent infringement. ECF No. 32. The Court's most recent amended scheduling order set claim construction briefing deadlines in October and November 2014, with a claim construction hearing to be set thereafter at the Court's convenience and fact discovery to remain open for forty-five days from the issuance of the Court's order on claim construction. See ECF No. 51. This scheduling order also set the expert discovery cut-off date as March 13, 2015, and a jury trial for July 28, 2015. Id.
On September 18, 2014, defendant requested that the Patent and Trademark Office (" PTO") reexamine plaintiff's U.S. Patent No. 7, 367, 235 (the " '235 patent"), the same patent asserted in plaintiff's sixth claim for relief. See Lee Decl. ¶ 3 (attached to ECF No. 61); see also id. Ex. B. On October 24, 2014, the PTO granted defendant's request for ex parte reexamination. See id. ¶ 4; id. Ex. C. The PTO's order explained that substantial new questions of patentability were raised by prior art cited in the request for ex parte reexamination. Pursuant to the PTO's order, plaintiff was given two months to file a Patent Owner's Statement; defendant's reply is due two months after the service of any timely filed Patent Owner's Statement. Id. Ex. C. On October 29, 2014, the parties filed their opening claim construction briefs in this Court. ECF Nos. 56, 59.
On October 29, 2014, defendant filed a motion to stay this case pending resolution of the ex parte reexamination proceedings. ECF No. 61. On October 31, 2014, the Court granted defendant's ex parte motion to stay further claim construction briefing pending the resolution of the instant motion. ECF No. 64. Plaintiff filed an opposition to the motion to stay on November 10, 2014. ECF No. 65. Defendant replied on November 24, 2014. ECF No. 70
In a separate case involving the same patent here asserted, Mophie, Inc. v. Shah, No. 8: 13-cv-01321 (C.D. Cal.), another judge in this judicial district recently granted summary judgment against mophie, finding the '235 patent invalid for indefiniteness. A redacted version of this order has been submitted as Exhibit A to defendant's reply brief. See ECF No. 70 Ex. A. This order found that " one skilled in the relevant art could not reasonably be expected to determine how to choose between" two potential meanings of the term " back plane" as used in the '235 patent. Id. at 49-50.
The Court held a hearing on the motion to stay on December 1, 2014. After considering the parties arguments, the Court will stay the patent claim only, at least until the earlier of the conclusion of the PTO reexamination proceedings or the Federal Circuit's disposition of plaintiff's appeal in the Shah case.
II. LEGAL STANDARD
A district court has discretionary power to stay proceedings pending before it. See Landis v. North American Co., 299 U.S. 248, 254, 57 S.Ct. 163, 81 L.Ed. 153 (1936). Accordingly, the court " may, with propriety, find it is efficient for its own docket and the fairest course for the parties to enter a stay of an action before it, pending resolution of independent proceedings which bear upon the case." Leyva v. Certified Grocers of Cal. Ltd., 593 F.2d 857, 863 (9th Cir. 1979). A district court's inherent power to control its docket " includes the authority to order a stay pending the outcome of reexamination proceedings in the PTO."
Guthy-Renker Fitness, LLC v. Icon Health & Fitness Inc., No. CV 97-7681 LGB (EX), 1998 WL 670240, at *2 (C.D. Cal. 1998). Under these circumstances, a court's discretion is guided by: " (1) the stage and history of the litigation; (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." Asetek Holdings, Inc. v. Cooler Master Co., No. 13-cv-00457-JST, at *5 (N.D. Cal. Apr. 13, 2014). Although these three factors have been widely applied, courts have sometimes looked more broadly to the " totality of the circumstances." Allergan Inc. v. Cayman Chem. Co., No. SACV 07-01316-JVS (RNBx), at *3 (C.D. Cal. Apr. 9, 2009); see also Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F.Supp.2d 1028, 1035 (C.D. Cal. 2013) (" The three-factor analysis . . . while important, does not capture every relevant consideration.").
" There is a liberal policy in favor of granting motions to stay proceedings pending the outcome of reexamination proceedings."
Guthy-Renker Fitness, 1998 WL 670240, at *2 (quoting ASCII Corp. v. STD Entm't USA, Inc., 844 F.Supp. 1378, 1381 (N.D. Cal. 1994)). Moreover, a district court's order staying an infringement suit pending re-examination proceedings is not appealable. Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983). Still, a " court is under no obligation to delay its own proceedings by yielding to ongoing PTO reexaminations, regardless of their relevancy to infringement claims which the court must analyze." Verinata Health v. Ariosa Diagnostics, No. C 12-05501 SI, at *5 (N.D. Cal. Jan. 13, 2014) (quoting ESCO Corp. v. Berkeley Forge & Tool, Inc., No. C 09-1635-SBA, at *5 (N.D. Cal. Sept. 28, 2009)).
A. Whether the Reexamination Proceedings Warrant a Stay of the ...