MAXIM INTEGRATED PRODUCTS, INC., PATENT LITIGATION
Filing
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MEMORANDUM OPINION. Signed by Chief Judge Joy Flowers Conti on 11/10/2014. (ten)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
IN RE: MAXIM INTEGRATED
PRODUCTS, INC. MDL No. 2354
This Document Relates to: All Actions
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Master Docket: Misc. No. 12-244
MDL No. 2354
MEMORANDUM OPINION
Only two Opposing Parties (collectively, the “OPs”) have not settled their claims
with Maxim Integrated Products, Inc. (“Maxim”) in this patent infringement MDL: JPMorgan
Chase (“Chase”) (No. 12-1641), and Branch Banking and Trust Company (“BB&T”) (No. 12945). These parties exchanged expert reports, and are awaiting instructions from this court with
respect to further scheduling of this case. For the reasons that follow, expert witness depositions
shall be completed by December 31, 2014, and the parties shall appear before the court for a
scheduling conference on January 14, 2015 at 4:45 p.m. At this juncture, this case will not be
stayed in favor of proceedings at the Patent and Trademark Office (“PTO”), or disposition of the
OPs’ premature motion for summary judgment.
1. Stay in Favor of CBM Review
Chase notified this court on September 3, 2014, that it refiled its petitions for
covered business method review (“CBM Review”) with the PTO’s Trial and Appeal Board
(“PTAB”) on August 21, 2014. (ECF No. 898, 899.) In that filing, Chase asked this court to stay
all further proceedings in this case until CBM Review was concluded at the PTO. (Id.) The OPs
previously sought the same relief when a first round of CBM Review petitions was filed
approximately one year ago. (ECF No. 777.) The other remaining OP, BB&T, joined Chase’s
renewed request to stay this litigation, even though BB&T had not itself refiled its CBM Review
petitions.1 (ECF No. 913.)
When the OPs first moved to stay this case in favor of CBM Review, this court
deferred ruling on the motion until after the PTAB decided whether it would institute CBM
Review. (4/2/14 Minute Entry). The PTAB did not institute CBM Review and this case was not
stayed at that time. (ECF No. 797, 852.) Since the time that this court considered the original
motion to stay, the Court of Appeals for the Federal Circuit issued a published and precedential
opinion on July 10, 2014, finding no error in a district court’s decision to defer ruling on a
motion to stay until after an institution decision was made at the PTO:
We note at the outset that it was not error for the district court to
wait until the PTAB made its decision to institute CBM review
before it ruled on the motion.
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[W]e see no error in the district court's decision to rule on the stay
motion after the PTAB rendered its decision on the CBM petition.
Furthermore, a district court is not obligated to “freeze” its
proceedings between the date that the motion to stay is filed and
the date that the PTAB decides on the CBM petition.
VirtualAgility, Inc. v. Salesforce.com, 759 F.3d 1307, 1315-16 (Fed. Cir. 2014); see Benefit
Funding Systems LLC v. Advance America Cash Advance Centers Inc., 767 F.3d 1383 (Fed.
Cir. 2014) (noting, without objection to the procedure, that the district court denied the motion
to stay that was filed before the PTAB issued its institution decision, and reconsidered the
matter after the PTAB decided to institute CBM Review). The OPs, in their supplemental
briefing, identify no reason why this court should deviate from the prior practice of deferring a
ruling on the motion to stay until after this court knows whether the PTAB will institute CBM
The PTAB refused to institute BB&T’s previously-filed CBM Review petitions because BB&T
was a declaratory judgment plaintiff in this MDL, but did not file its petition within one year. 35
U.S.C. § 325(a)(1); (ECF Nos. 791, 797.)
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Review, which practice the Court of Appeals for the Federal Circuit has now explicitly
approved. The court will decline to issue a decision with respect to the OPs’ renewed motion to
stay until after the PTAB issues its institution decision.
Chase is directed to notify this court within seven days of receiving the PTAB’s
institution decision.
2.
Stay in Favor of Summary Judgment
The OPs also seek to defer any further expert witness activity, such as depositions
and Daubert proceedings, until after this court rules upon their motion for summary judgment on
the issue of patent exhaustion. (ECF No. 941.) As an initial matter, the court did not set a
schedule for the filing of dispositive motions, and notified the parties that such a deadline would
be set after Daubert proceedings were concluded. (ECF No. 749.) The remaining OPs
nevertheless filed a motion for summary judgment before the then-applicable deadline for the
completion of expert witness depositions had passed, (ECF No. 926), and thereafter asked this
court to halt all further proceedings until that motion was decided, (ECF No. 941). The OPs’
unilateral decision to file a motion for summary judgment before the time set for filing such
motions, and then to argue, based upon that filing, that this case should essentially be stayed
pending resolution of that motion is not favored by the court.
Looking at the merits of the OPs’ requested relief, the OPs assert that the motion
is case dispositive, and can be decided without the need for expert witness depositions. (ECF No.
941 at 2.) Maxim disagrees, pointing out that the OPs themselves proffered four expert witness
reports on the issue of patent exhaustion, which opinions Maxim should be permitted to test
before opposing a motion for judgment as a matter of law on the issue. (ECF No. 957 at 3-4.)
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Based upon the parties’ submissions, it is plausible that expert witness opinions and testimony
will be relevant to the motion for summary judgment. The court discerns no reason to defer
expert depositions, which were scheduled for completion by October 31, 2014, after several
extensions, until a summary judgment motion is decided that may, or may not, require reference
to expert opinions. The reports and opinions are, at this time, fresh in the minds of the experts,
and counsel. The experts and counsel should have been prepared to have the depositions
completed by now. There is no just reason for delay.
Expert depositions should immediately proceed, and be completed no later than
December 31, 2014. In setting this deadline, the court notes that additional time was added to
the deposition period at the outset due to the upcoming holidays. The deadline will not be
further extended without a substantial and particularized showing of good cause. All counsel
shall appear before the court on January 14, 2015 at 4:45 p.m. for a conference, at which time the
court will further schedule this matter.
The filing of the motion for summary judgment, ECF No. 926, is premature in
light of the need to conduct expert discovery. The motion will be denied without prejudice. The
court will set the schedule for the filing of summary judgment motions at the conference to be
held on January 14, 2015.
An appropriate order will be entered.
Dated: November 10, 2014
BY THE COURT,
/s/ Joy Flowers Conti
Joy Flowers Conti
Chief United States District Judge
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