SAP America, Inc. v. Pi-Net International, Inc.

Filing 80

ORDER by Judge Hamilton denying 71 Motion to Lift Stay; finding as moot 71 Motion for Leave to File Amended Counterclaim. (pjhlc1, COURT STAFF) (Filed on 4/22/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAP AMERICA, INC.,

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Plaintiff,

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United States District Court
Northern District of California

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v.

Case No. 13-cv-1248-PJH
ORDER DENYING MOTION TO LIFT
STAY

LAKSHMI ARUNACHALAM,
Defendant.

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Before the court is the motion of defendant Dr. Lakshmi Arunachalam for an order

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lifting the stay imposed in this case on October 15, 2013. At that time, the parties

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stipulated to stay the case “until the PTAB has reached a final decision on the PTAB

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reviews, including any appeals . . . .” While the PTAB reviews were on-going, the District

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of Delaware issued an order on May 14, 2014, construing claims in the ‘492, ‘500, and

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‘158 patents, and granted defendant’s motion for summary judgment of invalidity and

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non-infringement. See Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 42 F.Supp. 2d 579 (D.

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Del. 2014). The court entered judgment and plaintiff filed a notice of appeal.

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On September 18, 2014, and March 6, 2015, the PTAB issued written decisions

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finding all challenged claims in the ‘492, ‘500, and ‘158 patents to be unpatentable. Dr.

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Arunachalam filed appeals of the PTAB decisions and all underlying orders, which were

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consolidated by the Federal Circuit. On July 21, 2015, the Federal Circuit granted SAP’s

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request to stay the appeals from the IPRs and CBM reviews pending the disposition of

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any petition for certiorari that might be filed in the JPMorgan case. The U.S. Supreme

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Court denied Dr. Arunachalam’s petition for writ of certiorari on January 11, 2016, and

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denied her petition for rehearing on March 7, 2016.
However, to date, the Federal Circuit has issued no further order in the JPMorgan

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case, and the stays in the appeals of the PTAB decisions have not been lifted.

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Accordingly, the conditions under which the stay in this case was imposed remain in

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place, and the motion for an order lifting the stay is DENIED. Because the case remains

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stayed, defendant and counterclaimant’s motion for leave to file an amended

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counterclaim is DENIED as moot.

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The date for the hearing on the motion, previously set for April 27, 2016, is
VACATED.

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United States District Court
Northern District of California

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IT IS SO ORDERED.

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Dated: April 22, 2016

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__________________________________
PHYLLIS J. HAMILTON
United States District Judge

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