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Lighting Science Group Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co., Ltd.

United States District Court, N.D. California, San Jose Division

June 19, 2017

LIGHTING SCIENCE GROUP CORPORATION, Plaintiff,
v.
SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., et al., Defendants.

          ORDER GRANTING DEFENDANTS' MOTION TO STAY PENDING INTER PARTES REVIEW

          BETH LAB SON FREEMAN, United States District Judge

         In this patent infringement action, Plaintiff Lighting Science Group Corporation (“Lighting Science”) asserts that Defendants Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., and Jiawei Technology (USA), Limited (collectively, “Jiawei”) infringe U.S. Patent Nos. 8, 201, 968 (“the '968 patent”); 8, 672, 518 (“the '518 patent”); and 8, 967, 844 (“the '844 patent”) (collectively, “the Asserted Patents”). Before the Court is Jiawei's motion to stay this case pending inter partes review. Pursuant to Civil Local Rule 7-1(b), the Court finds the instant motion suitable for decision without oral argument and hereby VACATES the hearing set for August 24, 2017. For the reasons discussed below, Jiawei's motion is conditionally GRANTED.

         I. BACKGROUND

         A. Factual Background

         Lighting Science and Jiawei are direct competitors in the LED lighting market. Amended Complaint ¶ 11, ECF 9. Lighting Science is an American corporation with its principle place of business in Rhode Island. Id. ¶ 1. Jiawei is a Chinese corporation with its principle place of business in Shenzhen, China. Id. ¶ 2.

         All three Asserted Patents relate to a low-profile LED light fixture. '968 patent, Abstract; '518 patent, Abstract; '844 patent, Abstract. The '968 patent, titled “Low Profile Light, ” issued on June 19, 2012. The '518 and '844 patents, both titled “Low Profile Light and Accessory Kit for the Same, ” issued in 2014 and 2015, respectively. The '518 patent is a continuation-in-part of the '968 patent, and the '844 patent is a continuation-in-part of the '518 patent. The '518 and '844 patents share the same specification, which is similar to the '968 specification.

         Since 2013, Lighting Science has brought a number of patent infringement actions asserting one or more of the three Asserted Patents: 19 in the Middle District of Florida and one (the instant case) in this district. Ex. 4 to Mot. at 9, ECF 71-5. To date, 14 of these actions have settled. Opp. 3; see also Ex. 2 to Reply at 2, ECF 79-3.

         Several of Lighting Science's infringement actions have prompted inter partes review (“IPR”) activity. In July and August 2016, Generation Brands LLC (“Generation Brands”), a defendant in Lighting Science Group Corporation v. Sea Gull Lighting Products LLC et al., Case No. 6:16-cv-00338, filed IPR petitions on the '968 and '844 patents (“the Original Petitions”). IPR2016-01478, Paper No. 1; IPR2016-01546, Paper No. 1. On February 6, 2017, the Patent Trial and Appeal Board (“PTAB”) instituted IPR on claims 1, 2, 5, 6, 11, 14-16, and 19-23 of the '968 patent and claims 1-3, 5, 7, 9, 10, 12, 14, 16, 17, and 20-24 of the '844 patent. Ex. 5 to Mot. at 37, ECF 71-6 (IPR2016-01478, Paper No. 8); Ex. 6 to Mot. at 2, ECF 71-7 (IPR2016-01546, Paper No. 11). However, the parties subsequently settled and, on March 13, 2017, jointly moved to dismiss both petitions. Ex. 7 to Mot., ECF 71-8. The PTAB granted this motion three days later. Id.

         On April 17, 2017, Technical Consumer Products, Inc., Nicor, Inc., and Amax Lighting, defendants in several other patent infringement actions brought by Lighting Science, filed IPR petitions for each of the three Asserted Patents (“the Current Petitions”). Ex. 8 to Mot., ECF 71-9 (IPR2017-01287, Paper No. 1); Ex. 9 to Mot., ECF 71-10 (IPR2017-01280, Paper No. 1); Ex. 10 to Mot., ECF 71-11 (IPR2017-01285, Paper No. 1). The Current Petitions seek review of the following claims: claims 1-12, 14-17, and 19-23 of the '968 patent, claims 1, 3-8, and 10-14 of the '518 patent, and claims 1-5, 7-9, 11, 12, 14, 16, 17, 19, and 21-24 of the '844 patent. Id.

         B. Procedural History

         Lighting Science initiated the instant case against Jiawei on July 11, 2016. ECF 1. It amended its complaint the following day. ECF 9. Jiawei answered on December 12, 2016. ECF 29. The Court held two case management conferences in January and March, 2017. ECF 49, 62.

         On March 9, 2017, Lighting Science identified the following claims as asserted: claims 1, 2, 14, 15, 19, and 20-23 of the '968 patent; claims 1, 3, 4, 5, 7, 9, 11, and 12 of the '518 patent; and claims 1-5, 7-9, 12-17, and 19-24 of the '844 patent (collectively, “the Asserted Claims”). Ex. 11 to Mot., ECF 71-12.

         II. LEGAL STANDARDS

         A district court has inherent power to manage its own docket and stay proceedings, “including the authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). A court is under no obligation to stay proceedings pending parallel litigation in the PTAB. See Aylus Networks, Inc. v. Apple, Inc., No. C-13-4700 EMC, 2014 WL 5809053, at *1 (N.D. Cal. Nov. 6, 2014). The factors that courts in this district consider when determining whether to stay litigation are: “(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) ...


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