Wherevertv, Inc. v. Comcast Corporation et al

Filing 103

OPINION AND ORDER denying without prejudice #90 motion to stay pending inter partes review. Signed by Judge John E. Steele on 10/9/2019. (RKR)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
WHEREVERTV, INC.,
Plaintiff,
v.

Case No:

COMCAST
COMMUNICATIONS, LLC,

2:18-cv-529-FtM-99NPM

CABLE

Defendant.
OPINION AND ORDER
This

matter

comes

before

the

Court

on

Comcast

Cable

Communications, LLC’s Motion to Stay Pending Inter Partes Review
(Doc. #90) filed on September 6, 2019.

Plaintiff Wherevertv, Inc.

filed a Response in Opposition (Doc. #97) on September 29, 2019,
and Comcast replied (Doc. #102).

For the reasons set forth below,

the Motion is denied without prejudice.
I.
This is a patent infringement dispute concerning U.S. Patent
No. 8,656,431 (“‘431 Patent”) held by plaintiff WhereverTV, Inc.,
entitled
Device.” 1

1

“Global

Interactive

Program

Guide

Application

and

Plaintiff alleges that defendant Comcast’s Xfinity X1

The ‘431 Patent (attached to the Amended Complaint at Doc.
#30-1), titled “Global Interactive Program Guide Application and
Device”, discloses a video access and delivery system for today’s
video entertainment environment.
One or more embodiments
disclosed in the ‘431 Patent are directed at receiving, accessing,
managing, and viewing digital video such as live television,
television on demand, and pre-recorded video and audio programming

Platform has directly infringed and continues to directly infringe
on the ‘431 Patent.

(Doc. #30, Amended Complaint.)

Plaintiff initiated this case on August 1, 2018 (Doc. #1) and
on August 20, 2019, plaintiff filed two separate petitions for
review by the U.S. Patent and Trade Office (USPTO) for inter partes
review 2 of the ‘431 Patent.

Comcast believes that these petitions

demonstrate that the asserted claims of this patent-in-suit case
are

invalid

and

should

be

canceled

or

review

streamline the issues and simply this case.

will

at

least

For these reasons

(and others), Comcast moves to stay this case pending the USPTO’s
resolution of the petitions.

Wherevertv opposes a stay, arguing

that unless and until the USPTO institutes an inter partes review,
it makes little sense to stay the litigation and doing so will
result in undue prejudice to plaintiff.

II.

from multiple content sources, via an Internet-enabled device
(e.g., smart phone, tablet, computer, television), anywhere in the
world over an internet connection using an interactive programming
guide.
2

The inter partes review process “is designed to improve upon
the previous inter partes re-examination process by (1) reducing
to 12 months the time the PTO spends reviewing validity, from the
previous reexamination average of 36.2 months; (2) minimizing
duplicative efforts by increasing coordination between district
court litigation and inter partes review; and (3) allowing limited
discovery in the review proceedings.”
Automatic Mfg. Sys. v.
Primera Tech., No. 6:12–cv–1727–RBD-DAB, 2013 WL 6133763, at *2
(M.D. Fla. Nov. 21, 2013).

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A. Standard
“Courts

have

broad

discretion

to

manage

their

dockets,

including the power to grant a stay pending the conclusion of PTO
administrative proceedings.”

Automatic Mfg. Sys., Inc. v. Primera

Tech., Inc., No. 6:12–cv–1727, 2013 WL 6133763, at *1 (M.D. Fla.
Nov. 21, 2013) (citation omitted).

The party moving for a stay

bears the burden of demonstrating that such relief is warranted.
See id. (citing Landis v. N. Am. Co., 229 U.S. 248, 254–55 (1936)).
When a party moves to stay patent infringement litigation
during the pendency of inter partes review, courts consider the
following non-exhaustive factors: (1) whether a stay will simplify
the issues in question for trial of the case; (2) whether discovery
is complete and whether a trial date has been set; and (3) whether
the

stay

would

unduly

prejudice

or

disadvantage to the non-moving party.

present

a

clear

tactical

See id.; Andersons, Inc.

v. Enviro Granulation, LLC, No. 8:13–cv–3004, 2014 WL 4059886, at
*2 (M.D. Fla. Aug. 14, 2014) (citations omitted).

“The court’s

inquiry is not limited to these three factors — the totality of
the circumstances governs.”

Automatic Mfg., 2013 WL 6133763, at

*1.
B. Inter Partes Review Background and Timing
Inter partes review was created by Congress in the Leahy–
Smith America Invents Act (AIA).

See 35 U.S.C. §§ 311–319.

An

inter partes review begins by a non-patent owner petitioning the

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USPTO to review the patentability of a patent.
311(b).

See 35 U.S.C. §

The non-patent owner challenges one or more claims of a

patent as invalided under 35 U.S.C. §§ 102 (prior art) and/or 103
(obviousness).

The patent owner may file a response to argue

against the USPTO instituting an inter partes review.

See 37

C.F.R. § 42.107(a)-(b).
An

inter

partes

review

challenged in the petition.

is

limited

to

only

those

claims

If, based on the petition and the

patent owner’s preliminary response, the USPTO determines “that
there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the
petition,” then it may initiate a review.

35 U.S.C. § 314(a).

That decision must be made within three months of the patent
owner’s response, or three months from the last day the patent
owner could respond to the petition.

See 35 U.S.C. § 314(b).

The scope of the review is indeterminate until the UPSTO’s
determination, however, because the regulations that implement the
AIA further provide that the USPTO may choose to review “all or
some of the grounds of unpatentability asserted for each claim.”
37 C.F.R. § 42.108(a).

In fact, even if all the grounds in a

petition are well-taken, the USPTO may authorize the review to
proceed on only “some of the challenged claims” or on only “some
of the grounds of unpatentability asserted for each claim.”

Id.

Indeed, the USPTO declines to conduct the review altogether if it

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cannot proceed with a review within the mandated timeframe.

77

Fed. Reg. 48,689.
On August 20, 2019, Comcast filed two petitions for inter
partes review of each asserted claim of the ’431 patent.

Thus,

by statute, the USPTO has at most six months – until about March
2020 3 – to determine whether one or both of Comcast’s petitions
establish a likelihood that the claims are invalid.

If the USPTO

agrees with Comcast, then it will institute inter partes review.
Furthermore, the USPTO may decide whether to institute inter partes
review earlier if plaintiff, as the alleged patent owner, waives
its right to file a preliminary response to Comcast’s petitions.
See 37 CFR § 42.107(b).
If the USPTO institutes a inter partes review, a panel of
three administrative patent judges, who have “legal knowledge and
scientific ability,” conduct the proceedings.
6(a)-(c),

311.

The

parties

discovery

and

respond to arguments and have the right to an oral hearing.

See

35 U.S.C. § 316(a)(10).

engage

in

See 35 U.S.C. §§

limited

The USPTO must complete the inter partes

review within one year, with the possibility that the proceeding
may be extended for an additional six months for good cause.
35 U.S.C. § 316(a)(11).

See

Any party may appeal the USPTO’s decision

3

Comcast states that the USPTO’s institution-decision
deadline triggers upon docketing of Comcast’s petitions at the
U.S. Patent & Trademark office, which had not happened at the time
it filed its Motion to Stay.

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to the United States Court of Appeals for the Federal Circuit.
See 35 U.S.C. §§ 141–44.
III.
Wherevertv argues that a petition for — as opposed to an
institution of — inter partes review does not shed much light on
the potential scope of an inter partes review, as it remains
unclear which, if any, petitions might be granted and when they
might be granted.

Therefore, plaintiff argues the Court should

deny Comcast’s Motion to Stay because the stay would prejudice
plaintiff and cause a tactical disadvantage to plaintiff.

Comcast

responds that a stay would conserve the parties’ and judicial
resources.
The Court is mindful (and the parties acknowledge) that judges
within the Middle District of Florida have issued decisions ruling
both ways on this issue – some grant a stay although the USPTO has
not yet decided whether to institute inter partes review and some
deny the request for stay without prejudice to be refiled if the
USPTO institutes inter partes review.

See Automatic Mfg. Sys.,

Inc. v. Primera Tech., Inc., No. 6:12-CV-1727-ORL-37, 2013 WL
1969247, at *3 (M.D. Fla. May 13, 2013) (“because a petition does
not shed much light on the potential scope of an inter partes
review, and because a stay could delay these proceedings for at
least six months with little to show, the Court finds that a stay
would unduly prejudice or present a clear tactical disadvantage to

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Plaintiff”); Patent Asset Licensing, LLC v. Bright House Networks,
LLC et al., 2016 WL 4431574, at *3 (M.D. Fla. Aug. 22, 2016)
(noting that courts in the Eleventh Circuit have also stayed cases
before the USPTO institutes inter partes review because of the
concrete, numerous, and well-recognized benefits of resort to the
USPTO, which all apply here); Canvs Corp. v. Nivisys, LLC, 2:14cv-99-FtM-38DNF (M.D. Fla. July 31, 2014) (denying motion to stay
without prejudice because the inter partes review petition was
still pending with the USPTO).
In this case, the Court exercises its discretion and finds
that the more prudent course of action is to deny the request
without prejudice to be revisited if the USPTO takes up review.
The Court agrees with the well-reasoned analysis in Automatic Mfg.,
2013 WL 1969247, where the request was denied without prejudice,
and was in fact granted once the USPTO decided to institute inter
partes

review.

See

Automatic

Mfg.

Sys.,

Inc.

v.

Primera

Technology, Inc., 6:12-cv-1727-Orl-37DAB, 2013 WL 6133763 (M.D.
Fla. Nov. 21, 2013).
In view of this administrative framework, it seems clear
that a stay of a patent infringement action is not
warranted when based on nothing more than the fact that
a petition for inter partes review was filed in the
USPTO. All in all, a petition can be pending before the
USPTO for up to six months before the agency decides to
“initiate” an inter partes review. This six months is
a kind of limbo that requires the court and the parties
to wait while the USPTO makes its decision.
If it
chooses not to proceed, then this action will have been
left languishing on the Court’s docket with no
discovery, no positioning of the parties on claim

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construction, and no dispositive motions. Put simply,
the parties will be no closer to trial in a type of case
that requires “early substantive disclosure” in order to
efficiently manage discovery and pretrial motion
practice.
See Peter S. Menell, et al., Patent Case
Management Judicial Guide 2–20 (2d ed. 2012).
Automatic Mfg., 2013 WL 1969247.

Here, a stay would result in

undue prejudice to plaintiff who should be able to litigate its
case until the USPTO decides whether to institute inter partes
review and identifies the scope of the review. 4

The Court can

then make a more informed analysis on a renewed Motion to Stay as
to

whether

inter

partes

review

will

simplify

the

issues

and

streamline this case.
Accordingly, it is hereby
ORDERED AND ADJUDGED:
Comcast Cable Communications, LLC’s Motion to Stay Pending
Inter Partes Review (Doc. #90) is DENIED WITHOUT PREJUDICE.
DONE and ORDERED at Fort Myers, Florida, this __9th__ day of
October, 2019.

Copies:
Counsel of Record

4

Even if all the grounds in a petition are well-taken, the
USPTO may authorize the review to proceed on only “some of the
challenged claims” or on only “some of the grounds of
unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a).

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