Lotes Co, LTD v. Hon Hai Precision Industry Co, Ltd et al

Filing 226

ORDER LIFTING STAY. Signed by Judge Alsup on 8/19/16. (whalc1, COURT STAFF) (Filed on 8/19/2016)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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LOTES CO., LTD,

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For the Northern District of California

United States District Court

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No. C 11-01036 WHA

Plaintiff,
v.

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HON HAI PRECISION INDUSTRY CO,
LTD., FOXCONN ELECTRONICS, INC.,

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Defendants.

ORDER LIFTING STAY

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This action concerns three groups of claims and counterclaims: (1) claims and

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counterclaims for breach of a patent license agreement that involves several patents owned by

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defendants, (2) claims for patent infringement and for declaratory judgment of invalidity

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concerning eight patents, also owned by our defendants, not subject to the license agreement,

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and (3) claims and counterclaims relating to a joint development agreement among the parties

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arising from defendants’ assertion of patent infringement against plaintiff.

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A prior judge stayed this case pending reexamination of several of the patents in suit by

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the United States Patent and Trademark Office. The case was reassigned to the undersigned

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judge. At a case management conference, the Court invited briefing regarding the maximum

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scope of the case that could go forward.

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All agree that the case can go forward as to the claims relating to the patent license
agreement, but our plaintiff contends that pending reexamination requests at the USPTO

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warrant maintaining the stay as to the remaining claims. Defendants contend the stay should be

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lifted in its entirety.

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Plaintiff argues that the stay should remain in place in part because three relevant

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patents are currently undergoing reexamination. Two such patents currently stand rejected as to

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all claims, and a third stands valid as amended after two prior reexaminations. Each of the three

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patents currently undergoing reexamination has undergone a prior reexamination at the request

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of our plaintiff herein. That is, our plaintiff has already had ample opportunity to challenge the

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patents before the USPTO. At this point, there is no point in allowing this case to continue to

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languish. Plaintiff’s successive reexamination requests appear to be a gimmick designed to
delay its day of reckoning. This order hereby LIFTS the stay in full.

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For the Northern District of California

United States District Court

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IT IS SO ORDERED.

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Dated: August 19, 2016.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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