United States District Court, N.D. California, Oakland Division
ORDER DENYING RENEWED MOTION TO STAY AND REOPENING
THE CASE Dkt. 81
SAUNDRA BROWN ARMSTRONG Senior United States District Judge
Plaintiff Finjan, Inc. (“Finjan”) brings the
instant patent infringement action against Defendant FireEye,
Inc. (“FireEye”), alleging infringement of U.S.
Patent Nos. 6, 804, 780 (“the '780 patent”),
8, 079, 086 (“the '086 patent”), 7, 975, 305
(“the '305 patent”), 8, 225, 408 (“the
'408 patent”), 7, 058, 822 (“the '822
patent”), 7, 647, 633 (“the '633
patent”), and 6, 154, 844 (“the '844
patent”) (collectively, the
“patents-in-suit”). First Am. Compl.
(“FAC”), Dkt. 11. The Court previously stayed the
action pending reexamination with respect to certain of those
parties are presently before the Court on FireEye's
renewed motion to stay the action pending ex parte
reexamination and in partes review of several of the
patents-in-suit. Dkt. 81. Having read and considered the
papers filed in connection with this matter and being fully
informed, the Court hereby DENIES Defendant's motion, for
the reasons stated below. The Court, in its discretion, finds
this matter suitable for resolution without oral argument.
See Fed.R.Civ.P. 78(b); N.D. Cal. Civ. L.R. 7-1(b).
brought the instant infringement action on July 8, 2013, and
filed the operative First Amended Complaint on August 16,
2013. Dkt. 1, 11. On September 3, 2013, FireEye filed an
Answer and Counterclaim, seeking a declaratory judgment of
non-infringement and invalidity as to each of the
patents-in-suit. Dkt. 13.
thereafter, FireEye filed requests with the Patent and
Trademark Office (“PTO”) for ex parte
reexamination of the '086, '822, and '633
patents. On October 7, 2013, FireEye moved to stay this
action pending resolution of the reexamination proceedings.
Dkt. 28. The Court granted FireEye's motion and
administratively closed the case. Order Granting Mot. to Stay
Pending Reexam. (“Initial Stay Order”), Dkt. 72.
September 2016, the parties filed a Joint Status Report
notifying the Court that the aforementioned reexamination
proceedings have concluded. Dkt. 79. However, in the same
filing, FireEye notified the Court that four of the seven
patents-in-suit are the subject of additional proceedings
before the PTO. Id. Thereafter, FireEye filed the
instant motion to continue the stay of this action pending
resolution of the additional proceedings before the PTO. Dkt.
81. Finjan opposes the motion. Dkt. 82.
March 22, 2017, Finjan also filed a Statement of Recent
Decisions, notifying the Court of decisions in several of the
additional PTO proceedings. Dkt. 85.
district court has inherent power to stay judicial
proceedings pending the review or reexamination of a patent
by the PTO. Proctor & Gamble Co. v. Kraft Foods
Glob., Inc., 549 F.3d 842, 849 (Fed. Cir. 2008) (citing
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988)). In deciding whether to stay a patent
infringement action pending the resolution of proceedings
before the PTO, courts in this district 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
nonmoving party. PersonalWeb Techs., LLC v. Apple
Inc., 69 F.Supp.3d 1022, 1025 (N.D. Cal. 2014)
Stage of the Litigation
first factor for the Court's consideration is the stage
of the litigation. Courts may consider: (1) whether the
parties have engaged in costly expert discovery and
dispositive motion practice; (2) whether the court has issued
its claim construction order; and (3) whether the court has
set a trial date. Personal Web Techs., LLC, 69
F.Supp.3d at 1025-26 (citations omitted). A stay is
particularly appropriate in cases that are still in the
initial stages of litigation and where there has been little
or no discovery. Telemac Corp. v. Teledigital, Inc.,
450 F.Supp.2d 1107, 1111 (N.D. Cal. 2006).
as the Court found when it granted FireEyes's initial
motion to stay the action, “the stage of the litigation
factor weighs in favor of a stay.” Initial Stay Order
at 2. This is unsurprising, given that the Court initially
stayed the action “at such an early stage of the
litigation.” Id. The Court has set no pretrial
or trial dates in this matter. Aside from Finjan's
Disclosure of Asserted Claims and Infringement Contentions,
the parties have not completed any discovery. Nor have the