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Finjan, Inc. v. FireEye, Inc.

United States District Court, N.D. California, Oakland Division

March 28, 2017

FINJAN, INC., a Delaware Corporation, Plaintiff,
FIREEYE, INC., a Delaware Corporation, Defendant.


          SAUNDRA BROWN ARMSTRONG Senior United States District Judge

         Dkt. 81 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 patents.

         The 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).

         I. BACKGROUND

         Finjan 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.

         Shortly 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.

         In 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.

         On 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.


         A 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) (citations omitted).


         A. Stage of the Litigation

         The 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).

         Here, 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 ...

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