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)

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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: (650) 521-5930 Fax: (650) 521-5931 boyd@turnerboyd.com flanders@turnerboyd.com 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: (617) 395-7000 Fax: (617) 395-7070 csmith@lalaw.com wseymour@lalaw.com ecarnevale@lalaw.com 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

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