Trustees of Boston University v. Everlight Electronics Co., Ltd. et al

Filing 104

Judge F. Dennis Saylor, IV: MEMORANDUM AND ORDER entered. The defendants' 65 motion to stay litigation pending inter partes review is DENIED without prejudice to its renewal after the PTO makes its threshold determination.(Cicolini, Pietro)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_______________________________________
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TRUSTEES OF BOSTON UNIVERSITY, )
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Plaintiff,
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v.
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EVERLIGHT ELECTRONICS CO., LTD. )
and EVERLIGHT AMERICAS, INC.,
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Defendants.
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TRUSTEES OF BOSTON UNIVERSITY, )
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Plaintiff,
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v.
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EPISTAR CORPORATION, et al.,
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Defendants.
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TRUSTEES OF BOSTON UNIVERSITY, )
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Plaintiff,
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v.
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LITE-ON, INC., et al.,
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Defendants.
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_______________________________________)

Civil Action No.
12-11935-FDS

Civil Action No.
12-12326-FDS

Civil Action No.
12-12330-FDS

MEMORANDUM AND ORDER ON DEFENDANTS’ MOTION TO STAY
LITIGATION PENDING INTER PARTES REVIEW
Plaintiff Trustees of Boston University (“BU”) has filed a number of patent infringement
actions, which have been consolidated before this Court for pre-trial purposes, to enforce claims

to LED technology in U.S. Patent No. 5, 686,738 (“’738 patent”). Defendants in three of those
actions—Everlight Electronics Co., Ltd., Everlight Americas, Inc. (collectively “Everlight”);
Epistar Corporation; and Lite-On Inc., Lite-On Service USA, Inc., Lite-On Trading USA, Inc.,
and Lite-On Technology Corporation (collectively “Lite-On”)—have jointly moved for the
Court to stay the litigation pending inter partes review of the ’738 patent by the United States
Patent and Trademark Office (“PTO”).
On May 22, 2013, shortly after the start of discovery, defendants Everlight, Epistar, and
Lite-On jointly filed a petition for inter partes review of the ’738 patent with the PTO. The
regulations governing the procedures before the PTO afford BU, as the patent holder, the right to
file a response to the petition within three months. See 37 C.F.R. § 42.107(b). Pursuant to 35
U.S.C. § 314(a), the PTO can grant a petition and institute inter partes review only if it
“determines that the information presented in the petition . . . and any response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” Section 314(b) sets forth the method for determining the date
by which the PTO must make this threshold determination. Here, the latest date by which the
PTO can make that determination is November 22, 2013.
The court has inherent discretionary power to stay an action as a matter of case
management. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir.1988); P&G v. Kraft
Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008). In patent actions, courts generally
evaluate motions to stay pending re-examination based on three considerations: (1) whether a
stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2)
whether a stay will simplify the issues in question and trial of the case; and (3) whether

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discovery is complete and whether a trial date has been set. Gryphon Networks v. Contact Ctr.
Compliance, 792 F. Supp. 2d 87, 90 (D. Mass. 2011); ADA Solutions, Inc. v. Engineered
Plastics, Inc., 826 F. Supp. 2d 348, 350 (D. Mass. 2011).
Here, however, it is not yet even established that a re-examination of the ’738 patent will
be undertaken by the PTO. Therefore, it would be premature for the Court to analyze this
potential reexamination as cause for a stay under the factors set forth above. Furthermore, the
patent at issue is set to expire in November 2014, and re-examination takes on average 18-24
months to complete, which suggests that any delay could seriously prejudice the patent holder.
Under the circumstances, it would not be appropriate at this point to halt discovery and delay the
litigation before the PTO has determined whether re-examination through inter partes review is
warranted. Accordingly, the Court will deny the defendants’ motion to stay litigation without
prejudice to its renewal should the PTO make the determination that such review will be
initiated.
For the foregoing reasons, the defendants’ motion to stay litigation pending inter partes
review is DENIED without prejudice to its renewal after the PTO makes its threshold
determination.
So Ordered.

/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge

Dated: July 11, 2013

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