Evolutionary Intelligence, LLC v. Foursquare Labs, Inc.

Filing 99

ORDER GRANTING DEFENDANT'S MOTION TO STAY PENDING INTER PARTES REVIEW AND VACATING HEARING; DIRECTIONS TO PARTIES. Signed by Judge Maxine M. Chesney on January 10, 2014. (mmclc2, COURT STAFF) (Filed on 1/10/2014)

1
2
3
4
5
6

Karen Boyd (State Bar No. 189808)
Steven W. Flanders (State Bar No. 206563)
TURNER BOYD LLP
2570 W. El Camino Real
Suite 380
Mountain View, CA 94040
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

7
8

Craig R. Smith (pro hac vice)
William J. Seymour (pro hac vice)
Eric P. Carnevale (pro hac vice)
LANDO & ANASTASI, LLP
Riverfront Office Park
One Main Street – 11th Floor
Cambridge, MA 02142
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

Counsel for Foursquare Labs, Inc.

9
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

10
11
12

EVOLUTIONARY INTELLIGENCE, LLC,

13

Plaintiff-Counterclaim
Defendant,

14
15
16
17
18

v.
FOURSQUARE LABS, INC.,
Defendant-Counterclaim
Plaintiff.

19
20

Case No. 3:13-cv-04203-MMC
[PROPOSED] ORDER
GRANTING DEFENDANT’S
MOTION TO STAY PENDING
INTER PARTES REVIEW
AND VACATING HEARING;
DIRECTIONS TO PARTIES

Date: January 24, 2014
Time: 9:00 AM
Courtroom: No. 7, 19th Floor
Honorable Maxine M. Chesney

21
22
23
24
25
26

[Proposed] Order Granting Defendant’s Motion to Stay Pending Inter Partes Review

27
28
Case No. 3:13-cv-04203-MMC

1
2
3

On January 24, 2014, Defendant’s Motion to Stay Pending Inter Partes Review came on
for hearing at 9:00 AM, before the Honorable Maxine M. Chesney. Plaintiffs and Defendants
were both represented by counsel. Having read and considered the papers submitted in support

4

of and in opposition to the motion, the Court deems the matter appropriate for decision thereon

5

8

and VACATES the hearing set for January 24, 2014.
For the reasons set forth in Defendant’s Motion, the supporting documents filed with the
and
Motion, the record herein, and the arguments of counsel, the Court orders as follows:
^
Defendant’s Motion to Stay Pending Inter Partes Review is GRANTED. The Court’s

9

decision is based upon a review of the relevant case law, and the analysis of three factors

10

traditionally considered in determining whether to stay a case pending the U.S. Patent &

6
7

11

Trademark Office’s (“PTO”) review of a patent-in-suit: 1) whether discovery is complete and

12
whether a trial date has been set; 2) whether a stay will simplify the issues in question and trial of
13
14

the case; and 3) whether a stay would unduly prejudice or present a clear tactical disadvantage to

15

the non-moving party. Software Rights Archive, LLC v. Facebook, Inc., Nos. 12-CV-3970-

16

RMW, 12-CV-3971-RMW and 12-CV-3972-RMW, 2013 WL 5225522, at *2 (N.D. Cal. Sept.

17

17, 2013) (new inter partes review); see also Pragmatus AV, LLC v. Facebook, Inc., No. 11-CV-

18
19

00494-EJD, 2011 WL 4635512, at *2 (N.D. Cal. Oct. 5, 2011) (old inter partes reexamination).
Accordingly, the court finds:

20
21
22
23
24
25
26

a) A stay is favored where, as here, the case is in the initial stage of litigation and there
has been little discovery. Internet Patents Corp. v. eBags, Inc., No. 12-cv-03385
SBA, 2013 WL 4609533, at *2 (N.D. Cal. Aug. 28, 2013).
b) A stay is likely to streamline this ligation based on the high likelihood that the Patent
Trial and Appeals Board (“PTAB”) will institute inter partes review with respect to at
[Proposed] Order Granting Defendant’s Motion to Stay Pending Inter Partes Review

27
28
Case No. 3:13-cv-04203-MMC

1

1
2
3

least one claim. Software Rights, 2013 WL 5225522, at *5. Additionally, because
4
relatively expeditiously, see 35 U.S.C. §§ 313, 316(a)(11)
any inter partes review will likely be completed before this case reaches trial, a stay
^
will promote judicial economy and the efficient use of judicial resources. See, e.g.,

4
Fresenius USA, Inc. v. Baxter International Inc., 721 F.3d 1330 (Fed. Cir. 2013)
5
6
7
8

(remanding case with instructions to dismiss following ten years of litigation, after all
asserted claims were canceled by the PTO during reexamination).
Plaintiff has not shown it will be unduly prejudiced by a stay. It
c) A stay will not unduly prejudice Plaintiff, because it has not sought a preliminary

9

injunction and the parties are not direct competitors. Semiconductor Energy Lab. Co.

10

v. Chimei Innolux Corp., No. 12-cv-21-JST, 2012 WL 7170593, at *4 (C.D. Cal. Dec.

11

does not
19, 2012). The potential for delayed resolution of this case, by itself, cannot

12
constitute undue prejudice where any alleged infringement may eventually be
13
14

redressed by monetary damages alone. See, e.g. Implicit Networks, Inc. v. Advanced

15

Micro Devices, No. 08-cv-184-JLR, 2009 WL 357902, at *3 (W.D. Wash. Feb. 9,

16

2009).

17
18
19

"
For the foregoing reasons, and in light of the"liberal policy in favor of granting motions to
see ASCII Corp. v. STD Entertainment USA, Inc., 844 F. Supp. 1378, 1381 (N.D. Cal. 1994),
stay proceedings pending the outcome of PTO proceedings, the Court GRANTS Defendant’s
^
Motion to Stay, and this case is hereby STAYED pending the conclusion of all inter partes

20
21
22
23
24

review proceedings of U.S. Patent Nos. 7,010,536 and 7,702,682, asserted by Evolutionary
Intelligence, LLC in this action.
No later than six months from the date of this order, and every six months thereafter, the
parties shall file a joint status report to apprise the Court of the status of the inter partes review

25
26

[Proposed] Order Granting Defendant’s Motion to Stay Pending Inter Partes Review

27
28
Case No. 3:13-cv-04203-MMC

2

1
2
3

proceedings.
IT IS SO ORDERED.
Dated: _________________________, 2014
January 10, 2014

4
THE HONORABLE MAXINE M. CHESNEY
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

[Proposed] Order Granting Defendant’s Motion to Stay Pending Inter Partes Review

27
28
Case No. 3:13-cv-04203-MMC

3