Uniloc USA, Inc. et al v. Apple Inc.

Filing 156

Order by Judge Lucy H. Koh Denying Uniloc's 152 Motion to Sever and Lift Stay.(lhklc4, COURT STAFF) (Filed on 3/11/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
Northern District of California

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UNILOC USA, INC., et al.,
Plaintiffs,

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Case No. 18-CV-00357-LHK
ORDER DENYING UNILOC’S MOTION
TO SEVER AND LIFT STAY

v.

Re: Dkt. No. 152
APPLE, INC.,
Defendant.

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On April 30, 2018, the Court stayed the instant action pending final resolution “of all

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pending IPR proceedings, including appeals.” ECF No. 144 at 6. At the time, the Patent Trial and

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Appeal Board (“PTAB”) had not yet decided whether to institute inter partes review (“IPR”) on

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U.S. Patent No. 8,239,852 (“’852 Patent”). Id. at 2. However, the PTAB had granted Defendant

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Apple, Inc.’s (“Apple”) petition and instituted an IPR covering all claims of U.S. Patent No.

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9,414,199 (“’199 Patent”). Id. Thus, the Court concluded that “[e]ven assuming that . . . [the

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PTAB] ultimately declines to institute IPR with regards to the ’852 Patent,” a stay would promote

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simplification of the issues and avoid two separate trials on the two patents-in-suit. Id. at 4–5.

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Before the Court is Plaintiff Uniloc USA, Inc.’s (“Uniloc”) motion to sever all matters

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pertaining to the ’852 Patent and lift the stay with respect to that patent only. ECF No. 152.
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Case No. 18-CV-00357-LHK
ORDER DENYING UNILOC’S MOTION TO SEVER AND LIFT STAY

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Uniloc contends that the Court should sever the ’852 Patent and lift the stay because the PTAB

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denied Apple’s petition for IPR review on the ’852 Patent. After briefing on the instant motion

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was completed on January 24, 2019, Uniloc pointed out that on March 8, 2019, the PTAB

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rendered a final decision in the IPR of the ’199 Patent. However, Apple may still appeal the

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PTAB’s final decision to the Federal Circuit. See 35 U.S.C. § 141(c) (“A party to an inter partes

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review or a post-grant review who is dissatisfied with the final written decision of the [PTAB] . . .

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may appeal the Board’s decision only to the United States Court of Appeals for the Federal

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Circuit.”).
The Court’s stay order expressly stayed the action pending resolution “of all pending IPR

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proceedings, including appeals.” ECF No. 144 at 6 (emphases added). Here, Apple may appeal

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United States District Court
Northern District of California

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the PTAB’s final decision on the ’199 Patent to the Federal Circuit. Thus, no reason exists to lift

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the stay. Moreover, severing the ’852 Patent and lifting the stay as to that patent only risks

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wasting Court and party resources with two separate claim constructions and two separate trials on

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the two patents-in-suit.

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Therefore, the Court DENIES Uniloc’s motion to sever the ’852 Patent and lift the stay as

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to that patent only. As the Court stated in its prior stay order, the parties shall submit a joint status

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report regarding the IPR proceedings on April 30, 2019, or within one week of the conclusion of

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all IPR proceedings. See ECF No. 144 at 6.

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IT IS SO ORDERED.

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Dated: March 11, 2019

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______________________________________
LUCY H. KOH
United States District Judge

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Case No. 18-CV-00357-LHK
ORDER DENYING UNILOC’S MOTION TO SEVER AND LIFT STAY