Xilinx, Inc. v. Invention Investment Fund I LP et al

Filing 174

ORDER denying 148 Motion to Stay. Signed by Judge Edward J. Davila on 11/30/2012. (ejdlc1, COURT STAFF) (Filed on 11/30/2012)

1
2
3
4
5
6
7

IN THE UNITED STATES DISTRICT COURT

8

FOR THE NORTHERN DISTRICT OF CALIFORNIA

9

SAN JOSE DIVISION
CASE NO(s). 5:11-cv-00671 EJD;
5:11-cv-04407 EJD

XILINX, INC.,

11
ORDER DENYING DEFENDANTS’
MOTIONS TO STAY

Plaintiff(s),
For the Northern District of California

United States District Court

10

12
13

v.
INVENTION INVESTMENT FUND I LP,
et. al.,

[Docket Item No(s). 148]
[Docket Item No(s). 100]

14
15

Defendant(s).
/

16
XILINX, INC.,
17
18

Plaintiff(s),
v.

19
DETELLE RELAY KG, LLC, et. al.,
20
21

Defendant(s).
/

22
23

Within these two related actions for declaratory judgments of non-infringement and

24

invalidity, Intellectual Ventures I LLC and Intellectual Ventures II LLC, the named defendants in

25

case number 5:11-cv-00671 EJD, as well as Detelle Relay KG, LLC, Roldan Block NY, LLC,

26

Latrosse Technologies, LLC, TR Technologies Foundation LLC, Taichi Holdings, LLC, Noregin

27

Assets N.V., LLC and Intellectual Venture Funding LLC, the named defendants in Case Number

28

5:11-cv-04407 EJD (collectively, “Defendants”), presently move the court for orders staying the
1
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY

1

cases in favor of reexamination proceedings before the United States Patent and Trademark Office

2

(“USPTO”). See Docket Item No. 148 in Case No. 5:11-cv-00671 EJD; Docket Item No. 100 in

3

Case No. 5:11-cv-04407 EJD.1 Plaintiff Xilinx, Inc. (“Plaintiff”) opposes the request.

4

Having reviewed the moving, opposing and reply papers filed by the parties, the court has

5

determined that a stay of these actions is not warranted. Accordingly, the motions will be denied for

6

the reasons explained below.
I.

7
8
9

BACKGROUND

According to the operative complaints, Plaintiff is “engaged in the business of designing,
developing, and marketing complete programmable logic solutions.” Intellectual Ventures I LLC
and Intellectual Ventures II LLC are part of a network of affiliates or holding companies controlled

11
For the Northern District of California

United States District Court

10

by Intellectual Ventures and Intellectual Ventures Management, which together hold rights to more

12

than 30,000 patents and patent applications. See Second Amended Complaint (“SAC”), Docket

13

Item No. 100 in 11-671, at ¶ 17. The remaining named defendants are holding companies for the

14

various asserted patents and are also allegedly controlled by Intellectual Ventures and Intellectual

15

Ventures Management. See SAC, Docket Item No. 86 in 11-4407, at ¶ 24.

16

The two cases before this court appear to have grown out of related patent infringement

17

litigation brought by Defendants against Plaintiff and its competitors in the District of Delaware. In

18

these cases, Plaintiff seeks relief as to twelve patents. At issue in 11-671 are U.S. Patent No.

19

6,252,527 (the “‘527 patent”), U.S. Patent No. 6,408,415 (the “‘415 patent”), U.S. Patent No.

20

6,687,865 (the “‘865 patent”), U.S. Patent No. 6,698,001 (the “‘001 patent”), and U.S. Patent No.

21

7,080,301 (the “‘301 patent”). At issue in 11-4407 are U.S. Patent No. 5,524,251 (the “‘251

22

patent”), U.S. Patent No. 5,751,736 (the “‘736 patent”), U.S. Patent No. 5,887,165 (the “‘165

23

patent”), U.S. Patent No. 6,321,331 (the “‘331 patent”), U.S. Patent No. 6,747,350 (the “‘350

24

patent”), U.S. Patent No. 6,768,497 (the “‘497 patent”) and U.S. Patent No. 7,100,061 (the “‘061

25

patent”).

26

Prior to reassignment to the undersigned, Judge Susan Illston heard and decided various

27
1

28

In this order, the earlier filed case will be abbreviated as 11-671. The later filed case will
be abbreviated as 11-4407.
2
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY

1

preliminary motions. On the first motion filed in 11-671, Judge Illston transferred claims to

2

Delaware, dismissed Plaintiff’s claims with respect to seven patents (the ‘251, ‘736, ‘165, ‘331,

3

‘350, ‘497, and ‘061 patents) because they were not owned by or assigned to any parties to the suit,

4

and dismissed the remaining invalidity claims with leave amend. Plaintiff eventually filed the SAC

5

in 11-671 on September 30, 2011, and Judge Illston denied Defendants’ subsequent motion to

6

dismiss the SAC for lack of jurisdiction.

7

Plaintiff also filed 11-4407 in September, 2011, to re-assert its claims relating to the seven

8

patents dismissed from 11-671 action. After Judge Illston partially granted a motion to dismiss in

9

that case, Plaintiff filed the SAC on February 6, 2012.
Nine of the patents-in-suit between the two cases (the ‘736, ‘165, ‘527, ‘331, ‘415, ‘865,

11
For the Northern District of California

United States District Court

10

‘350, ‘497 and ‘301 patents) either are or have been the subject of reexamination proceedings before

12

the USPTO, apparently at the request of Plaintiff.2 The remaining three patents (the ‘251, ‘001 and

13

‘061) are not currently in reexamination.

14
15

Defendants now move to stay both cases to allow for the completion of the still-pending
reexamination proceedings.

16

II.

LEGAL STANDARD

17

As in other contexts, whether to grant a stay pending the reexamination of a patent is

18

entrusted to the discretion of the district court. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27

19

(Fed. Cir. 1988) (“Courts have inherent power to manage their dockets and stay proceedings,

20

including the authority to order a stay pending conclusion of a PTO reexamination.”). A stay is

21

therefore never required but may be “particularly justified where the outcome of the reexamination

22

would be likely to assist the court in determining patent validity and, if the claims were canceled in

23

the reexamination, would eliminate the need to try the infringement issue.” Cygnus Telecomms.

24

Tech., LLC v. United World Telecom, L.C. (In re Cygnus Telecomms. Tech., LLC, Patent Litig.),

25

385 F. Supp. 2d 1022, 1023 (N.D. Cal. 2005) (citing Gould v. Control Laser Corp., 705 F.2d 1340,

26
2

27
28

It appears that reexamination proceedings have concluded for the ‘331 patent. The Ex Parte
Reexamination Certificate issued by the USPTO on July 10, 2012, indicates that, while some claims
were amended, none of the claims were cancelled. See Decl. of Iman Lordgooei, Docket Item No.
155 in 11-671, Docket Item No. 107 in 11-4407, at Ex. G.
3
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY

1

1342 (Fed. Cir. 1983)). In addition, the court may ultimately benefit at trial from the expert opinion

2

of the PTO especially when a review of prior art is necessary. See In re Etter, 756 F.2d 852, 857

3

(Fed. Cir. 1985) (“When the patent is concurrently involved in litigation, an auxiliary function [of

4

the reexamination] is to free the court from any need to consider prior art without the benefit of the

5

PTO’s initial consideration.”).

6

Three factors are considered to determine the appropriateness of a stay: (1) whether a stay

7

would unduly prejudice or present a clear tactical disadvantage to the nonmoving party, (2) whether

8

a stay will simplify the issues and the ensuing trial, and (3) whether discovery is complete and

9

whether a trial date has been set. Cygnus, 385 F. Supp. 2d at 1022.
There is a “liberal policy in favor of granting motions to stay proceedings pending the

11
For the Northern District of California

United States District Court

10

outcome of USPTO reexamination or reissuance proceedings.” ASCII Corp. v. STD Entm’t, 844 F.

12

Supp. 1378, 1381 (N.D. Cal. 1994). This is because “Congress instituted the reexamination process

13

to shift the burden or reexamination of patent validity from the courts to the PTO.” Canady v. Erbe

14

Elektromedizin GmbH, 271 F. Supp. 2d 64, 78 (D.D.C. 2002). However, as this court has noted,

15

“some courts have begun to rethink that [liberal] policy in recent years.” Avago Techs. Fiber IP

16

(Singapore) PTE, Ltd. v. IPtronics, Inc., Case No. 5:10-cv-02863 EJD, 2011 U.S. Dist. LEXIS

17

82665, at *11, 2011 WL 3267768 (N.D. Cal. July 28, 2011) (citing Network Appliance Inc. v. Sun

18

Microsystems Inc., Case No. C-07-06053 EDL, 2008 U.S. Dist. LEXIS 76717, 2008 WL 2168917

19

(N.D. Cal. May 23, 2008)).

20

III.

DISCUSSION

21

A.

Prejudice or Tactical Disadvantage

22

The court begins by examining the prejudice or tactical disadvantage to Plaintiff that may

23

result from a stay. Plaintiffs articulation of prejudice or disadvantage is multi-faceted. First,

24

Plaintiff argues that the timing of Defendants’ request to stay - over a year after this action and most

25

of the reexaminations were filed - demonstrates it is in actuality a tactical attempt “to delay or stop

26

this action in favor of the action in Delaware,” where Defendants are asserting four separate patents

27

against Plaintiff. Second, Plaintiff believes abatement of this litigation would provide Defendants an

28

advantage in the six ex parte reexaminations which remain pending because Defendants, having
4
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY

1

already received Plaintiff’s invalidity contentions in this proceeding, could then unilaterally argue

2

against Plaintiff’s theories before the USPTO while simultaneously depriving Plaintiff of a court

3

forum.3 Third, Plaintiff contends that a stay can hinder its ability to collect and preserve evidence in

4

support of this case. Finally, Plaintiff argues it will be deprived of the timely resolution necessary to

5

adjust its business activities if necessary.

6

For their part, Defendants disagree that Plaintiff would be unduly prejudiced by a stay of

7

these cases. In particular, Defendants take issue with the characterization of this motion as a tactical

8

maneuver and explain that the timing of the motion was “dictated by the natural procedural

9

development of the case.” Defendants also note that none of the ex parte reexaminations will
prevent Plaintiff from presenting all of its invalidity arguments in this case. In addition, Defendants

11
For the Northern District of California

United States District Court

10

do not believe that a stay will prevent Plaintiff from preserving evidence.

12

The court concurs with Defendants in part. Plaintiff will not be prejudiced in this case by the

13

outcome of the currently-pending ex parte reexaminations since those reexaminations will have no

14

effect on Plaintiff’s ability to raise invalidity arguments before this court. In addition, Plaintiff’s

15

concern about lost evidence is not sufficient grounds to deny a stay considering Plaintiffs failed to

16

provide any meaningful discussion of this issue. But these determinations notwithstanding, the court

17

nonetheless concludes that Plaintiff has demonstrated a tactical disadvantage that will result from a

18

stay. While it is certainly true that “a general claim of delay is not enough on its own to constitute

19

undue prejudice,” Plaintiffs have gone beyond such a superficial claim here. Convergence Techs.

20

(USA), LLC v. Microloops Corp., No. 5:10-cv-02051 EJD, 2012 U.S. Dist. LEXIS 51794, at *7,

21

2012 WL 1232187 (N.D. Cal. Apr. 12, 2012). Indeed, the timing of this motion when coupled with

22

other relevant circumstances is suggestive of the strategy described by Plaintiff. See Interwoven,

23

Inc. v. Vertical Computer Sys., Inc., No. C 10-04645 RS, 2012 U.S. Dist. LEXIS 30946, at *6, 2012

24
25
26
27
28

3

“[I]n an ex parte [reexamination] proceeding a third party is not allowed to present its side
of the case; only the patent holder is involved in the proceeding.” Pacific Bioscience Laboratories,
Inc. v. Nutra Luxe MD, LLC, No. C10-0230JLR, 2011 U.S. Dist. LEXIS 3564, at *12 n.2, 2011 WL
65947 (W.D. Wash. Jan. 10, 2011) (citing Wabco Holdings, Inc. v. Bendix Commercial Vehicle
Systems, LLC, No. 09-3179 (DMC), 2010 U.S. Dist. LEXIS 64036, 2010 WL 2628335 (D.N.J. June
28, 2010)). As a result, “a defendant is not estopped from challenging patent validity in a future
civil action following an ex parte reexamination.” Id.
5
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY

ruling to request reexamination lends credence to Vertical’s contention that the current motion is

3

simply a delaying strategy.”). Over a year into this litigation, Defendants have made this request

4

only after the occurrence of three events significant to Defendant’s role in these cases: (1) the

5

Delaware district court denied a motion to stay the infringement case, thereby ensuring that the

6

litigation involving Defendants’ asserted patents will proceed, (2) this court’s predecessor denied a

7

motion to dismiss for lack of subject matter jurisdiction, confirming that Defendants will need to put

8

on a defense at some point; and (3) Defendants received invalidity contentions, giving them insight

9

into Plaintiff’s ultimate theories. In light of these developments, and considering almost all of the

10

reexaminations were initiated in early 2011, there appears no other reasonable explanation for the

11
For the Northern District of California

WL 761692 (N.D. Cal. Mar. 8, 2012) (“That Interwoven waited until after receiving an unfavorable

2

United States District Court

1

delay in seeking this relief. Accordingly, this factor weighs heavily against a stay.

12

B.

13

The court now examines whether a stay in favor of reexamination will simplify or streamline

14

this litigation. In that regard, the court is mindful that “[t]o truly simplify the issues . . . the outcome

15

of the reexamination must ‘finally resolve all issues in the litigation.’” Yodlee, Inc. v. Ablaise Ltd.,

16

Nos. C-06-07222 SBA, C-06-02451 SBA, C-07-01995 SBA, 2009 U.S. Dist. LEXIS 5429, at *12,

17

2009 WL 112857 (N.D. Cal. Jan. 16, 2009) (quoting Gladish v. Tyco Toys Inc., No. CIV. S-92-1666

18

WBS/JFM, 1993 U.S. Dist. LEXIS 20211, 1993 WL 625509 (E.D. Cal. Sept. 16, 1993)). Thus,

19

notable is the fact that four of the patents-in-suit are not currently undergoing reexamination; the

20

court will have to resolve all claims in dispute as to those patents. That being the case, waiting for

21

the outcome of reexamination does nothing for that portion of the litigation.

22

Simplification of Issues

Moreover, Defendants’ optimism as to the potential for rejection, cancellation or significant

23

amendment to claim terms as a result of the reexaminations must be tempered by the results of

24

reexaminations already completed. Only one of over thirty claim terms was cancelled after the first

25

reexamination of the ‘527 patent. Only three of the original claim terms were cancelled after

26

reexamination of the ‘251 patent and meaningful amendment of other claim terms did not

27

materialize. For the ‘331 patent, reexamination only resulted in the amendment of three claim terms

28

without cancellation or rejection. Based on this history, it seems more likely than not that litigation
6
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY

1
2
3

will occur over most of the claim terms in their current form.
Because it does not appear that reexamination will case significant change to this case or the
issues, this factor also weighs against a stay.

4

C.

5

Finally, the court considers the current status of these cases. There is some history here,

6

including initial motion practice, the exchange of preliminary contentions and completion claim

7

construction discovery according to the current scheduling order. Thus, the parties have invested

8

some significant effort into this litigation despite the fact that reexaminations have been pending.

9

Procedural Posture

At the same time, however, discovery is not complete, claim construction briefing has not yet
occurred and the hearing on claim construction is still months away. Thus, while these cases have

11
For the Northern District of California

United States District Court

10

each been pending for over a year, they have “not reached the ‘point of no return’ for which a stay

12

would [be] inappropriate due to a progressed procedural posture.” Convergence, 2012 U.S. Dist.

13

LEXIS 51794, at *7. This factor, therefore, weighs in favor of a stay.

14

D.

15

In review, two of the relevant factors weigh against a stay. The circumstances within which

16

Defendants’ present this request are suggestive of tactical maneuvering to Plaintiff’s detriment, and

17

it does not appear that the current reexamination proceedings will have the significant impact

18

claimed by Defendants. Although the procedural posture of these cases tends to favor abatement, it

19

is far outweighed by the preceding factors. Defendants’ motions will therefore be denied.

20

IV.

21

Conclusion

ORDER

Based on the foregoing, Defendants’ Motions to Stay are DENIED.

22
23

IT IS SO ORDERED.

24

Dated: November 30, 2012
EDWARD J. DAVILA
United States District Judge

25
26
27
28
7
Case Nos. 5:11-cv-00671 EJD; 5:11-cv-04407 EJD
ORDER DENYING DEFENDANTS’ MOTIONS TO STAY