United States District Court, S.D. California
ORDER GRANTING DEFENDANT'S MOTION TO STAY [ECF.
GONZALO P. CURIEL UNITED STATES DISTRICT JUDGE.
Life Technologies Corporation (“Life Tech”) filed
a motion to stay the case on November 5, 2019. ECF No. 144.
Plaintiff Unisone Strategic IP, Inc. (“Plaintiff”
or “Unisone”) filed an amended opposition on
November 26, 2019. ECF No. 151. TraceLink filed a reply on
December 10, 2019. ECF No. 152. The Court finds the motion
suitable for disposition without oral argument pursuant to
Civil Local Rule 7.1(d)(1). Upon review of the moving papers,
the Court GRANTS Defendant's motion to stay.
25, 2013, Plaintiff filed its initial Complaint asserting
infringement of U.S. Pat. No. 6, 996, 538 (“the
‘538 patent”) against Defendant. ECF No. 1.
Defendant soon filed a motion to dismiss the Complaint, ECF
No. 10, which the Court granted on October 22, 2013. ECF No.
19. On November 4, 2013, TraceLink, Inc.
(“TraceLink”), a defendant in a co-pending action
before this Court, filed a request for ex parte
reexamination of the ‘538 patent. See
3:13-CV-01743-GPC-LL. Shortly afterwards, Plaintiff filed a
first amended complaint alleging infringement of the same
patent. ECF No. 21. The Court stayed this action on April 2,
2014, pending the reexamination of the patent. ECF No. 35.
reexamination certificate was subsequently issued on November
24, 2014, amending the ‘538 patent and allowing the
claims over the asserted prior art. U.S. Ex Parte
Reexamination Cert. No. U.S. 6, 996, 538 C1. On December 5,
2014, Life Tech filed a Petition with the PTAB seeking CBM
review of '538 patent claims 52, 62, 67, 70-76, 81,
83-85, and 96 (the “first CBM”). On April 8,
2015, the Court granted a motion to stay this action, pending
the final outcome the first CBM. ECF No. 59. On December 30,
2015, Life Tech filed a second petition with the PTAB
requesting CBM patent review of the '538 patent claims 1,
14, 19, 22-28, 32, 34-36, and 45 (the “second
CBM”). In total, Life Tech requested CBM review of
claims 1, 14, 19, 22-28, 32, 34-36, 52, 62, 67, 70-76, 81,
83-85, and 96. See CBM2015-00037, Paper No. 1;
CBM2016-00025, Paper No. 2. None of these challenged claims
survived review and were thus declared invalid by the PTAB on
June 20, 2019.
August 26, 2019, the Court granted Plaintiff leave to file a
second amended complaint. ECF No. 123. On September 12, 2019,
Plaintiff filed the currently operative second amended
complaint, which asserts fifty-three dependent claims that
were not at issue in the prior CBM reviews. ECF No. 125.
Specifically, Plaintiff asserted infringement of claims 4, 6,
8-12, 15-18, 21, 29-31, 39-40, 42-43, 46, 49, 57-58, 60, 63,
66, 69, 77-78, 86, and 93-94. ECF No. 125 at ¶¶ 24,
November 1, 2019, Life Tech filed two CBM petitions
requesting that the PTO institute CBM review of all remaining
dependent claims of the '538 patent on the ground that
the claims are unpatentable under 35 U.S.C. § 101.
See CBM2020-00001 (ECF 127, Ex. 1); CBM2020-00005.
The PTAB will reach a decision on institution by May 8, 2020
and, if instituted, reach a final decision no later than May
3, 2021. Life Tech alleges that a decision of unpatentability
in the latest CBMs would effectively end this litigation. ECF
No. 144-1 at 8.
Leahy-Smith America Invents Act (the “AIA”)
provides a “transitional program” to review CBM
patents. AIA § 18. The AIA further grants district
courts authority to stay proceedings, pending CBM review
before the U.S. Patent and Trademark Office (the
“USPTO”), upon the consideration of four factors:
(A) whether a stay, or the denial thereof, will simplify the
issues in question and streamline the trial; (B) whether
discovery is complete and whether a trial date has been set;
(C) whether a stay, or the denial thereof, would unduly
prejudice the nonmoving party or present a clear tactical
advantage for the moving party; and (D) whether a stay, or
the denial thereof, will reduce the burden of litigation on
the parties and on the court. Id. § 18(b)(1);
VirtualAgility Inc. v. Salesforce.com, Inc., 759
F.3d 1307, 1310 (Fed. Cir. 2014).
argues that the four factors weigh in favor of denying the
motion to stay or, alternatively, continuing this motion
until the PTAB decides to undertake review of the two latest
CBMs. Defendant opposes.
first factor considers whether a stay will simplify the
issues. AIA § 18(b)(1)(A). The two latest CBM petitions
filed by Life Tech challenge all remaining claims. ECF No.
127-1 at 7. Plaintiff argues that this factor does not weigh
in favor a stay because Life Tech is using the CBM petition
as a delay tactic. ECF No. 132 at 14-15. Life Tech counters
that a stay would not present a tactical advantage to Life
Tech and therefore was not the motivation behind seeking the
stay, and further contends that the current CBM reviews will
substantially simplify or moot the present infringement
claims, noting that all claims in the '538 patent that
were challenged in the earlier CBM petitions are no longer at
issue in this litigation. The Court agrees. Plaintiff's
fifty-three new dependent claims asserted in its SAC were not
at issue in the prior CBM reviews, and a CBM review of these
remaining claims can simplify the issues. See Versata
Software, Inc. v. Callidus Software, Inc., 771 F.3d
1368, 1371-73 (Fed. Cir. 2014) vacated on other grounds
by 780 F.3d 1134, 2015 WL 981523 (Fed. Cir. Feb. 27,
2015). If any dependent claims are invalidated based on a CBM
review, those claims will not need to be litigated.
further argues that it would be premature to grant a stay
even before PTAB has made its decision on institution and
that the Court should therefore defer ruling on the motion to
stay, citing Loyalty Conversion Sys. Corp., 2014 WL
3736514 (E.D. Tex. July 29, 2014) and other cases. Life Tech
counters that since the Federal Circuit has already confirmed
that the ...