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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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 SAP AMERICA, INC., 8 Plaintiff, 9 10 United States District Court Northern District of California 11 v. Case No. 13-cv-1248-PJH ORDER DENYING MOTION TO LIFT STAY LAKSHMI ARUNACHALAM, Defendant. 12 13 14 Before the court is the motion of defendant Dr. Lakshmi Arunachalam for an order 15 lifting the stay imposed in this case on October 15, 2013. At that time, the parties 16 stipulated to stay the case “until the PTAB has reached a final decision on the PTAB 17 reviews, including any appeals . . . .” While the PTAB reviews were on-going, the District 18 of Delaware issued an order on May 14, 2014, construing claims in the ‘492, ‘500, and 19 ‘158 patents, and granted defendant’s motion for summary judgment of invalidity and 20 non-infringement. See Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 42 F.Supp. 2d 579 (D. 21 Del. 2014). The court entered judgment and plaintiff filed a notice of appeal. 22 On September 18, 2014, and March 6, 2015, the PTAB issued written decisions 23 finding all challenged claims in the ‘492, ‘500, and ‘158 patents to be unpatentable. Dr. 24 Arunachalam filed appeals of the PTAB decisions and all underlying orders, which were 25 consolidated by the Federal Circuit. On July 21, 2015, the Federal Circuit granted SAP’s 26 request to stay the appeals from the IPRs and CBM reviews pending the disposition of 27 any petition for certiorari that might be filed in the JPMorgan case. The U.S. Supreme 28 Court denied Dr. Arunachalam’s petition for writ of certiorari on January 11, 2016, and 1 2 denied her petition for rehearing on March 7, 2016. However, to date, the Federal Circuit has issued no further order in the JPMorgan 3 case, and the stays in the appeals of the PTAB decisions have not been lifted. 4 Accordingly, the conditions under which the stay in this case was imposed remain in 5 place, and the motion for an order lifting the stay is DENIED. Because the case remains 6 stayed, defendant and counterclaimant’s motion for leave to file an amended 7 counterclaim is DENIED as moot. 8 9 The date for the hearing on the motion, previously set for April 27, 2016, is VACATED. 10 United States District Court Northern District of California 11 IT IS SO ORDERED. 12 Dated: April 22, 2016 13 14 __________________________________ PHYLLIS J. HAMILTON United States District Judge 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2

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