IXI Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al

Filing 176

ORDER GRANTING (Docket Nos. 135 in 4:15-cv-03755-HSG and 144 in 4:15-cv-03752- HSG) MOTION to Lift Stay. Signed by Judge Haywood S. Gilliam, Jr. on 4/19/2019. (ndrS, COURT STAFF) (Filed on 4/19/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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IXI MOBILE (R&D) LTD., et al.,
Plaintiffs,

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v.

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Case No. 15-cv-03752-HSG
ORDER GRANTING MOTION TO
LIFT STAY
Re: Dkt. No. 144

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SAMSUNG ELECTRONICS CO LTD, et
al.,

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United States District Court
Northern District of California

Defendants.
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IXI MOBILE (R&D) LTD., et al.,

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Case No. 15-cv-03755-HSG

Plaintiffs,
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v.
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APPLE INC,

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Defendant.

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Re: Dkt. No. 135

Plaintiffs IXI Mobile (R&D) LTD and IXI IP, LLC (collectively, “IXI”) moved to lift the
stay in these matters. Case No. 15-cv-03752-HSG Dkt. No. 144 (“Mot.”)1; Case No. 15-cv03755-HSG Dkt. No. 135. The Court granted the motions on the record on February 21, 2019,
Dkt. No. 162, and issues this short order explaining its reasoning for the record.

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I.
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BACKGROUND
Plaintiffs IXI Mobile (R&D) Ltd. and IXI IP, LLC sued Defendants Samsung Electronics

Co. and Apple Inc. in the Southern District of New York on June 17 and October 2, 2014,
respectively. See Dkt. No. 1 (Samsung); Case No. 3:15-cv-03755-HSG, Dkt. No. 1 (Apple).

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All docket citations refer to the docket in IXI Mobile (R&D) Ltd. et al. v. Samsung Electronics
Co. Ltd. et al., Case No. 15-cv-03752-HSG, unless otherwise indicated.

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On February 3, 2015, Defendants moved to transfer the cases to the Northern District of

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California. Dkt. No. 44. On August 6, 2015, Judge Sullivan granted the motion. Dkt. No. 79.

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The cases were related and reassigned to this Court on September 9, 2015. Dkt. Nos. 90, 94. An

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initial case management conference occurred on November 5, 2015. Dkt. No. 130.

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The parties served infringement and invalidity contentions, served and responded to

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written discovery and document requests, began source code review, served third-party subpoenas,

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and conducted at least one deposition. Dkt. No. 124-1 ¶¶ 7, 11–12, 14, 16–17, 22. The parties

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filed a joint claim construction statement on June 8, 2015, and Plaintiffs filed an opening claim

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construction brief on July 8, 2015. Dkt. Nos. 68, 73.
On June 18 and 19, 2015, Defendants Apple and Samsung filed petitions for IPR

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United States District Court
Northern District of California

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challenging the validity of each asserted claim in all three patents at issue. Dkt. No. 119-1 ¶ 5.

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After filing the IPR petitions, Defendants moved to stay the litigation. Dkt. No. 119. The Court

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granted the stay on November 12, 2015. Dkt. No. 133. On September 10, 2018, Defendants’ IPR

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proceedings concluded when the Federal Circuit affirmed the Patent Trial and Appeal Board

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(“PTAB”) decision invalidating the challenged claims of U.S. Patent No. 7,039,033 (the “’033

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Patent”). Dkt. No. 142. The final result of Defendants’ 2015 IPRs invalidated every asserted

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claim other than claim 10 of U.S. Patent No. 7,295,532 (the “’532 Patent”). Dkt. No. 147 at 4.

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On March 24, 2017, IXI requested an ex parte reexamination of the ’033 Patent with the

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United States Patent Office (“USPTO”), and on February 1, 2018, the USPTO issued an ex parte

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reexamination certificate amending claim 56 and adding claims 57–124 to the ’033 Patent. Dkt.

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No. 142. Plaintiffs have stated that they intend to assert “many of the[] reexamined claims” of the

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’033 patent in this litigation when the stay is lifted. Dkt. No. 144 at 3. On November 8, 2018,

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Apple filed six IPRs challenging the validity of newly-added claims 65–124 of the ’033 patent.

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Dkt. No. 147 at 5.

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On April 3, 2018, Apple filed a request for ex parte reexamination of the ’532 Patent,

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including claim 10, and on May 23, 2018, the USPTO issued a decision that granted Apple’s ex

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parte reexamination request on the challenged claims of the ’532 Patent. Dkt. No. 142. The

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PTO’s reexamination of the ’532 Patent is still ongoing. Id.
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II.

DISCUSSION
“Courts have inherent power to manage their dockets and stay proceedings, including the

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authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v. Quigg, 849

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F.2d 1422, 1426-27 (Fed. Cir. 1988). “District courts have broad discretion to manage their

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dockets, including the power to grant a stay of proceedings.” Procter & Gamble Co. v. Kraft

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Foods Glob., Inc., 549 F.3d 842, 848–49 (Fed. Cir. 2008). Courts generally consider three factors

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when determining whether to grant a stay pending IPR: “(1) whether discovery is complete and

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

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the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to
the non-moving party.” Evolutionary Intelligence, LLC v. Facebook, Inc., No. 13-cv-04202-SI,

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United States District Court
Northern District of California

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2014 WL 261837, at *1 (N.D. Cal. Jan. 23, 2014).

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When this case was initially filed, Plaintiffs asserted 41 claims from three patents. See

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Dkt. No. 147-1. Now, over three years later, even though only one of the originally-asserted

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claims has survived IPR, Plaintiffs have generated and intend to assert additional claims.

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Defendants have filed IPRs attacking some subset of those claims. The Court will have to decide

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based on the currently-pending motions for leave to amend infringement contentions whether

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these newly-generated claims will become part of these actions.

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The last of the IPRs upon which the initial stay was based concluded over five months ago.

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Dkt. No. 142 (September 10, 2018). Based upon the results of the stay thus far, the Court is not

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persuaded that a continued stay is likely to simplify the issues in the case in a timely manner. The

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Court therefore GRANTS Plaintiffs’ motion to lift the stay.

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IT IS SO ORDERED.
Dated: 4/19/2019
______________________________________
HAYWOOD S. GILLIAM, JR.
United States District Judge

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