Core Wireless Licensing S.a.r.l. v. Apple Inc.

Filing 205

ORDER by Judge Richard Seeborg Staying 196 Action. (cl, COURT STAFF) (Filed on 6/15/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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CORE WIRELESS LICENSING S.A.R.L.,

Case No. 15-cv-05007-RS

Plaintiff,
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v.

ORDER STAYING ACTION

United States District Court
Northern District of California

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APPLE INC.,
Defendant.

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Plaintiff filed a motion to stay this proceeding with respect to four of the five patents in

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suit, in light of recently-instituted inter partes review (“IPR”) proceedings before the U.S. Patent

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and Trademark Office. Courts in this District look to three factors when determining whether to

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stay a patent infringement case pending review or reexamination of the patents: “(1) whether

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discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the

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issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a

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clear tactical disadvantage to the nonmoving party.” PersonalWeb Techs., LLC v. Apple Inc., 69 F.

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Supp. 3d 1022, 1025 (N.D. Cal. 2014) (citing, among others, Telemac Corp. v. Teledigital, Inc.,

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450 F.Supp.2d 1107, 1111 (N.D.Cal. 2006). There is no real dispute that these factors weigh in

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favor of a stay with respect to the four patents subject to IPR.

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The litigants part company, however, with respect to the fifth patent, U.S. Patent No.

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5,907,823 (the ’823 patent) as to which no IPR has been initiated. Defendant argues that unless

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the stay is extended to include it, there will be unnecessary duplication of efforts and expense,

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such that the advantages of a stay would be severely diminished, and prejudice would increase.

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Plaintiff, in turn, argues that as to the ’823 patent itself, proceedings in the PTO cannot and will

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not simplify or inform the issues to be litigated, and that not going forward on what it contends are

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largely segregable matters will lead to unwarranted and potentially prejudicial delay.

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Both sides have presented their arguments in generalized terms, without many specific

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examples of the efficiencies or inefficiencies they respectively contend would flow from either a

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complete or partial stay. Plaintiff has pointed to the fact that the nature of the technology in the

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’823 patent is arguably quite different from that in the other patents, and that there is no overlap in

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inventors. Such distinctions may mean that certain aspects of litigating the ’823 patent might not

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be intertwined with issues related to the other patents. Nevertheless, because there is substantial
or complete overlap in the products accused of infringing all of the patents, it seems inevitable

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United States District Court
Northern District of California

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there would be other aspects of discovery—and ultimately trial—that would be duplicated if the

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patents were litigated separately.

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While by no means conceding that a complete stay is appropriate, plaintiff requests that

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such a stay be ordered in lieu of its motion being denied outright. Although the question is close,

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under all the circumstances the disadvantages and potential burdens of a partial stay outweigh the

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balance that otherwise would easily warrant granting a stay with respect to the four patents subject

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to IPR. Additionally, the burden to plaintiff of the stay being extended to the ’823 patent—even

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though a stay would not be warranted as to it independently—is minimal. In light of these

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conclusions and of plaintiff’s request that its motion not simply be denied, this action will be

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stayed in its entirety pending the IPR proceedings. The parties shall file a joint status report every

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120 days.

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IT IS SO ORDERED.

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Dated: June 15, 2016
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RICHARD SEEBORG
United States District Judge

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CASE NO.

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15-cv-05007-RS