United States District Court, N.D. California
ORDER DENYING MOTION TO STAY
Re: ECF No. 200
JON S. TIGAR, District Judge.
Before the Court is Defendant's Motion to Stay Litigation Pending Inter Partes Review. ECF No. 200. The Patent Trademark Office has not yet acted on View's recently-filed petitions for inter partes review ("IPR") of certain patents at issue in this litigation. Nonetheless, View argues that, if IPR is granted, that process would be likely to simplify the issues for discovery and trial.
For the reasons set forth below, the motion is DENIED.
Plaintiff SAGE Electrochromics, Inc. ("SAGE") filed this action in December 2012, alleging that Defendant View, Inc. (View") infringed SAGE's United State Patents Nos. 5, 724, 177 ("177 patent") and 7, 372, 610 ("610 patent"). ECF No. 1. Both companies design and manufacture electrochromic glass technology used in windows and are direct competitors in the market. Id. at ¶¶ 13, 22; ECF No. 200 at 19. Electrochromic glass, also known as dynamic glass, can change between clear and tinted states via electric charges. ECF No. 1 ¶ 13. SAGE alleges that it is a "pioneer in the creation and development of a market for its dynamic glass products, to create the emerging market for green windows' that exists today." ECF No. 206 at 8.
In February 2013, View filed its answer and asserted several counterclaims, alleging that SAGE infringed View's United States Patent No. 8, 243, 357 (the "357 patent") and seeking declaratory judgment on the 177 and 610 patents. ECF No. 29 ¶¶ 12-37. In May 2013, View amended its answer and counterclaims, alleging that SAGE also infringed View's United States Patents Nos. 5, 831, 851 (the "851 patent") and 8, 432, 603 (the "603 patent"). ECF No. 58.
On April 11, 2014, SAGE filed a First Amended Complaint ("FAC"), alleging View also infringed four other SAGE patents-United States Patents Nos. 6, 039, 850 ("the 850 patent"); 5, 830, 336 ("the 336 patent"); 6, 337, 758 B1 ("the 758 patent"); and 7, 193, 763 B2 ("the 763 patent"). ECF No. 161 ¶¶ 13-76. SAGE allegedly served View with infringement contentions for the four newly asserted patents on May 16, 2014. ECF No. 200-1 ¶ 3. On August 8, 2014, pursuant to a Court order, SAGE allegedly served View a Preliminary Election of Asserted Claims which substantially narrowed the number of asserted claims across the total six SAGE patents from 67 to 24 claims. Id . ¶ 5.
In November 2014, View petitioned the Patent and Trademark Office ("PTO") for inter partes review ("IPR") of each asserted claim in three of the newly asserted patents. ECF Nos. 200-2, 200-5, 204-1. View also promptly filed its motion to stay on November 7, 2014. ECF No. 200. Technology tutorials and a claim construction hearing ("Markman hearing") for the newly asserted claims are scheduled to take place in January 2015. ECF No. 172. Intervenor-Plaintiff Leybold Optics, GMBH submitted a statement of neutral non-opposition to View's motion to stay, and SAGE opposes the motion. ECF Nos. 205-06.
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 the Proceedings
View argues that the first factor-the stage of the proceedings-"weighs heavily in favor of a stay." ECF No. 200 at 11. In support of its position, View argues that no trial date is set, discovery is ongoing, no depositions have been taken, no emails have been collected or produced, no expert testimony has been conducted, no dispositive motions have been scheduled or heard, and a claim construction proceeding for five of the nine patents-in-suit will not take place until January 2015. Id. at 12. SAGE counters that the litigation is not in fact in its infancy, but has "progressed significantly, " as the parties have exchanged documents, responded to discovery requests, litigated a discovery dispute, underwent claim construction for four patents, and briefed claim construction on the remaining five patents. ECF No. 206 at 18.
The Court concludes that, although the complaint was first filed two years ago and four of the claims already have been construed, the case is not so far along as to weigh against a stay. Discovery has not significantly advanced and a trial date has not yet been set. No dispositive motions have been scheduled or heard, and only written discovery has taken place-neither party has taken any depositions or conducted expert testimony. In addition to the small scope of completed discovery, the nature of the completed discovery is less burdensome on the parties than the discovery that remains in this case. See Versata Software, Inc. v. Callidus Software, Inc., No. 14-1468, 2014 WL 6480522, at *5 (Fed. Cir. Nov. 20, 2014) (finding the timing of the proceedings strongly favored stay where no witnesses or experts were deposed, but many documents had been exchanged); Cypress Semiconductor Corp. v. GSI Tech., Inc., No. 13-CV-02013-JST, 2014 WL 5021100, at *2 (N.D. Cal. Oct. 7, 2014) (finding stay appropriate where "parties have engaged in some ...