United States District Court, N.D. California
ORDER GRANTING DEFENDANT'S MOTIONS TO
PHYLLIS J. HAMILTON UNITED STATES DISTRICT JUDGE
the court are defendant Apple, Inc.'s
(“Apple”) motions to stay the three
above-captioned cases pending inter-partes review
(“IPR”) by the Patent Trial and Appeal Board
(“PTAB”). The matter is fully briefed and
suitable for decision without oral argument. Accordingly, the
hearing set for May 30, 2018 is VACATED. Having read the
parties' papers and carefully considered their arguments
and the relevant legal authority, and good cause appearing,
the court GRANTS Apple's motions as follows.
Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together
“Uniloc”) filed these actions in June 2017,
alleging that Apple infringed U.S. Patent Nos. 8, 872, 646
(the “'646 patent”); 7, 653, 508 (the
“'508 patent”); 7, 881, 902 (the
“'902 patent”); 8, 712, 723 (the
“'723 patent”); and 7, 690, 556 (the
actions were originally filed in the Eastern District of
Texas. On August 22, 2017, the three actions were
consolidated, along with other cases, in the Eastern District
of Texas, with No. 18-cv-00362-PJH as the Lead Case.
See No. 18-cv- 00362-PJH, Dkt. 24.
filed motions to change venue on September 22, 2017 in each
of the cases, and the Eastern District of Texas court granted
the motions on December 22, 2017.
December 8, 2017, Apple filed a petition for IPR of the
asserted claims in the ‘646 patent. Dkt. 136-1
(“Vidmar Decl.”), Ex. A2. On December 21, 2018,
December 22, 2018, and January 5, 2018, Apple filed petitions
for IPR of the ‘508, ‘723, and ‘902
patents, respectively. Id. at Exs. A3-A5. Apple has
not petitioned for IPR review of the ‘556 patent, which
is the sole patent at issue in No. 18-cv-00362-PJH.
cases were transferred to the Northern District of California
in January 2018. On February 21, 2018 this court related the
three above-captioned cases. Dkt. 103. In ordering the cases
related, the court found that “(1) The actions concern
substantially the same parties, property, transaction or
event; and (2) It appears likely that there will be an unduly
burdensome duplication of labor and expense or conflicting
results if the cases are conducted before different
Judges.” Civ. L.R. 3-12(a).
before the court are Apple's motions to stay the three
above-captioned actions pending the IPR. Plaintiffs oppose
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)
(citation omitted). In determining whether to grant a stay
pending IPR, courts 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 non-moving
party.” Evolutionary Intelligence, LLC v. Facebook,
Inc., 2014 WL 261837 at *1 (N.D. Cal. Jan. 23, 2014);
Universal Elecs., Inc. v. Universal Remote Control,
Inc., 943 F.Supp.2d 1028, 1030-31 (C.D. Cal. 2013).
first factor considers the stage of the litigation. The cases
have recently been transferred to the Northern District of
California. On April 26, 2018, the court held an initial case
management conference at which the court scheduled the claim
construction hearings for December 5, 2018. The scheduling
order common to the three actions set by the Eastern District
of Texas has been vacated, and the parties have been ordered
to meet and confer to propose a new case schedule. On May 7,
2018, the parties proposed-but the court has not yet
ordered-a single schedule that would control the three
actions. The parties propose identical dates for each case
and would end fact discovery in February 2019 and conduct
trial in “Fall 2019.” Dkt. 157.
it is true that the motion to transfer venue resulted in some
delay in the progress of the case, other factors have also
entered into creating the delay, including Uniloc's
amended pleadings. Much of the litigation activity to date
has related to the change in venue and the sufficiency of the
court notes that some limited discovery has taken place.
E.g., No. 18-cv-00361-PJH, Dkt. 76 at 5. But even
this activity has been mostly preliminary in nature, with
most of both fact and expert discovery still largely
incomplete and even unscheduled. Although the parties have
incurred some costs, significant early litigation costs still
remain that could be avoided by a stay, depending on the
PTAB's decisions. See PersonalWeb Techs., LLC v.
Apple Inc., 69 F.Supp.3d 1022, 1026-27 (N.D. Cal. 2014)
(focusing on cost of remaining work in case); Microsoft
Corp. v. Tivo Inc., No. 10-cv-00240-LHK, 2011 WL
1748428, at *6 (N.D. Cal. May 6, 2011) (finding that the
stage of the litigation weighed in favor of a stay where the
parties had ...