United States District Court, N.D. California, San Jose Division
BING XU PRECISION CO. LTD., Plaintiff,
ACER INCORPORATED, et al., Defendants.
ORDER DENYING MOTION TO LIFT STAY Re: Dkt. No.
J. DAVILA, United States District Judge
Bing Xu Precision Co., Ltd. filed suit against Defendants,
asserting patent infringement. The parties stipulated to stay
the action pending inter partes review
(“IPR”) with the U.S. Patent and Trademark Office
(“PTO”). Dkt. 61. In January 2018, the Patent
Trial and Appeal Board (“PTAB”) instituted review
on certain claims, but not as to claim 2 of each of the three
patents in suit. Plaintiff moves to lift the current stay and
reopen this action as to claim 2 of each of the three patents
in suit. The Court finds it appropriate to take the motion
under submission for decision without oral argument pursuant
to Civil Local Rule 7-1(b). For the reasons set forth below,
Plaintiff's motion is denied.
of 2016, Plaintiff filed this suit against Defendants Acer
Inc. and Acer America Corp., asserting patent infringement of
U.S. Patent No. 8, 512, 071, entitled "Electrical
Connector Assembly Having a Printed Circuit Board With
Soldering Holes Interconnected to a Plurality of
Contacts" ("the '071 Patent"), No. 8, 740,
631, entitled "Electrical Connector Assembly"
("the '631 Patent"), and No. 8, 758, 044,
entitled "Electrical Connector Assembly Having a Printed
Circuit Board With Soldering Holes Interconnected to a
Plurality of Terminals And a Flat Flexible Cable"
("the '044 Patent") (collectively "the
patents in suit"). In May of 2017, Plaintiff served its
infringement contentions asserting claims 1-4 of the '071
and '044 Patents and claims 1-2 of the '631 Patent.
Later in May of 2017, Luxshare Precision Industry Co.
("Luxshare"), filed a petition for IPR challenging
the patentability of all twenty (20) claims of the '071
Patent, and another IPR challenging the patentability of all
twenty (20) claims of the '044 Patent. In June of 2017,
Luxshare filed a third IPR petition challenging the
patentability of claims 1 and 2 of the '631 Patent. Also
in June of 2017, Plaintiff filed an amended complaint to
include Luxshare and Luxshare-ICT, Inc.
January 12, 2018, the PTAB instituted review only on claims
1, 3, 4, and 8 of the '071 and '044 Patents and claim
1 of the '631 Patent. The PTAB did not institute review
on asserted claim 2 of the three patents in suit.
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) (citations
omitted). In determining whether to stay proceedings pending
PTO review, courts consider three factors: (1) the stage of
litigation (i.e. 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 disadvantage
to the non-moving party. Evolutionary Intelligence, LLC
v. Facebook, Inc., No. 13-4202 SI, 2014 WL 261837, at *1
(N.D. Cal. Jan. 23, 2014).
Stage of Litigation
the case is in its early stages. The Luxshare defendants have
not responded to the complaint. Although some document
production and written discovery has been exchanged,
discovery is not complete. No. depositions have been taken.
Expert discovery has not started. Claim construction has not
occurred. No. trial date has been set. This first factor
weighs in favor of continuing the stay. See id.
Simplification of the Case
contends that maintaining the stay will not simplify the
issues in this case because Plaintiff is willing to litigate
only non-instituted claim 2 of the three patents in suit and
"to drop the asserted claims that remain in the
IPRs." Plaintiff's Motion, p.3. Plaintiff contends
that the PTAB has already decided that claim 2 of each of the
patents in suit is not invalid and the PTAB proceedings will
have no effect on these claims.
argument is unpersuasive. As a preliminary matter,
Plaintiff's offer "to drop" the instituted
claims is illusory. Plaintiff has not agreed to dismiss the
instituted claims from the case with prejudice. Therefore,
Plaintiff could always reassert the claims against Defendants
later. Further, even if Plaintiff dropped the instituted
claims, the IPR proceedings could still simplify the case.
Claim 2 of each of the patents in suit is a dependent claim,
based on claim 1 in each of the patents in suit. Claim 1 of
each of the patents in suit is under IPR review. If, for
example, claim 1 of each of the patents in suit is found
invalid, then the question of the validity of claim 2 is
likely to be simplified. A stay is also justified to avoid
the possibility of inconsistent results, such as if the PTO
upholds claim 1 and the court invalidates claim 2 of the
patents in suit. See Microsoft Corp. v. Tivo Inc.,
No. 10-240 LHK, 2011 WL 1748428, at *5 (N.D. Cal. May 6,