Emblaze Ltd. v. Apple Inc.

Filing 361

ORDER DENYING APPLE'S MOTION FOR STAY by Magistrate Judge Paul Singh Grewal denying 317 Motion to Stay. (psglc3S, COURT STAFF) (Filed on 2/25/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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EMBLAZE LTD.,

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Plaintiff,

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v.
APPLE INC.,

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Defendant.

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Case No. 5:11-cv-01079-PSG
ORDER DENYING APPLE’S
MOTION TO STAY THE CASE
(Re: Docket No. 317)

It has been observed that the U.S. Supreme Court’s relationship to patent law sometimes

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seems like that of a non-custodial parent who spends an occasional weekend with the kids. 1 Even

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as those certiorari weekends have been become more common, or at least prominent, in recent

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years, you can still count them on one hand. And so when the Supreme Court decides to consider

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an issue that is presently and fiercely contested before a trial court, it might seem obvious that the
trial court should call a time-out by issuing a stay.

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See Rebecca S. Eisenberg, Commentary, The Supreme Court and the Federal Circuit: Visitation
and Custody of Patent Law, 106 MICH. L. REV. FIRST IMPRESSIONS 28 (2007),
http://www.michiganlawreview.org/firstimpressions/vol106/eisenberg.pdf (last visited Feb. 25,
2014).
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Case No. 5:11-cv-01079-PSG
ORDER DENYING APPLE’S MOTION TO STAY THE CASE

This is the situation this trial court now confronts. Taking note of the recent grant of

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certiorari in Akamai v. Limelight Networks, 2 and the potential implications for Plaintiff Emblaze

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Ltd.’s indirect infringement claims in this case, Defendant Apple Inc. has asked this court to stay

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all proceedings until a decision comes from on high. In Akamai, a sharply divided en banc Federal

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Circuit panel held that Akamai did not have to prove that any Limelight customer directly infringed

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the patent; Limelight’s inducement alone could be enough. 3 Apple says that a reversal of this

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decision could effectively gut Emblaze’s current case, because Emblaze has no proof that any
Apple customer directly infringes the method claims at issue. 4
The parties and their skilled counsel have thoroughly addressed the legal standards for a

United States District Court
For the Northern District of California

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issuing a stay, and so the court won’t repeat them here. Suffice it to say that the case law is clear

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that the discretion for such a case management rests soundly with the undersigned. 5 Having

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thought long and hard about all this, the court concludes that a stay under the present circumstance
would NOT be appropriate.

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First, there is a vigorous debate between the parties about exactly how much of this case is

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subject to Akamai. As Emblaze points out, of the 22 claims of the patent-in-suit asserted against

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Apple, 10 are apparatus claims, 6 which Akamai does not address. Because Emblaze’s damages

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theory is in no way dependent on the number of claims Apple infringes, 7 so long as the apparatus

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claims survive, it is far from clear that a reversal would substantially change anything.

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See Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) cert.
granted, 134 S. Ct. 895 (2014).

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See id. at 1306.

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See Docket No. 317 at 2.

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See Docket No. 317 at 5; Docket No. 325 at 2.

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See Docket No. 325 at 3.

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See, e.g., Aro Mf’g Co. v. Convertible Top Replacement Co., 377 U.S. 476, 508 (1964).
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Case No. 5:11-cv-01079-PSG
ORDER DENYING APPLE’S MOTION TO STAY THE CASE

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Second, this case is old and getting older by the day. By the time trial is over, it will be

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four years old. Four judges in two districts have presided. At some point, if a case needs to be

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tried, it needs to be tried. With trial presently set for June 30, it seems safe to say that we have

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reached that point in this case.

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Third, this court is getting older. Maybe not yet old, but older, and with each passing day,
its memory of the case’s intricate technical and procedural details fades. Better to dig into the

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many summary judgment and other motions pending and soon-to-be-pending while things are
relatively fresh.

United States District Court
For the Northern District of California

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Fourth, if the Supreme Court is the non-custodial parent of patent law, the Federal Circuit

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must be viewed, and respected, as the custodial parent who endures the daily grind of keeping the

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law on the straight and narrow. While this court must of course follow any change imposed by the

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Supreme Court, a majority of this nation’s highest patent court have spoken on the issue of proof

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requirements for indirect infringement claims. It would be disrespectful of that custodial parent’s
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efforts to presume that a reversal is coming.
Apple may be right that a large part of the work in the run-up to trial will have to

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reconsidered in the event that the Federal Circuit is reversed. The court takes that possibility

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seriously, and respects Apple’s point that costs will be incurred that might have been avoided by

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delay. But delay, too, has its costs, and on balance, the right course is to continue on course and

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deal with any change in the law or other circumstances that may come.

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IT IS SO ORDERED.
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Dated: February 25, 2014
_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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Case No. 5:11-cv-01079-PSG
ORDER DENYING APPLE’S MOTION TO STAY THE CASE