Interval Licensing LLC v. AOL, Inc. et al

Filing 198

Joint MOTION to Stay by all Defendants filed by Defendant Yahoo! Inc. Oral Argument Requested. (Attachments: #1 Proposed Order) Noting Date 4/1/2011, (Walters, Mark)

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 v. AOL, INC., et al., Defendants. INTERVAL LICENSING LLC, UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON

Hon. Marsha J. Pechman

No. 2:10-CV-01385-MJP Plaintiff, DEFENDANTS' JOINT MOTION TO STAY PROCEEDINGS PENDING REEXAMINATIONS Note on Motion Calendar: April 1, 2011 ORAL ARGUMENT REQUESTED

Defendants AOL Inc. ("AOL"), Google Inc. ("Google"), YouTube, LLC ("YouTube"), 17 Apple Inc. ("Apple"), eBay Inc. ("eBay"), Facebook, Inc. ("Facebook"), Yahoo! Inc. 18 ("Yahoo!"), OfficeMax North America, Inc., incorrectly named as OfficeMax Inc., 19 ("OfficeMax"), Netflix, Inc. ("Netflix"), Staples, Inc. ("Staples") and Office Depot, Inc. 20 ("Office Depot") (collectively, "Defendants") respectfully move this Court for an Order staying 21 the proceedings in this matter pending resolution of petitions for reexamination ("Petitions for 22 Reexam") filed with the U.S. Patent and Trademark Office ("PTO") concerning each of United 23 States Patents No. 6,263,507 ("the '507 patent"), No. 6,034,652 ("the '652 patent"), No. 24 6,788,314 ("the '314 patent"), and No. 6,757,682 ("the '682 patent") (the "Patents-in-Suit"). 25 26 27 Suit, which may substantially simplify or outright resolve the issues in this case. No matter the 28
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I.

INTRODUCTION

Defendants have filed requests for reexamination with respect to each of the Patents-in-

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outcome of the reexaminations, substantial economies will be gained from a stay. If the reexamination results in the PTO rejecting and canceling some or all of the asserted claims, this litigation will end or at least be narrowed. If the claims are amended in reexamination, or if Interval makes arguments during the reexamination process to the PTO in an attempt to overcome rejections based on the prior art, the prosecution history of the Patents-in-Suit will have changed and, in the absence of a stay, the work of the Court and the Parties prior to the PTO's final disposition will need to be redone. II. THE THREE FACTORS COURTS CONSIDER IN DETERMINING WHETHER TO STAY A PATENT INFRINGEMENT CASE ALL STRONGLY FAVOR STAY Plaintiff Interval Licensing LLC ("Interval") filed suit against Defendants on August 27, 2010, asserting claims for infringement of the '507 and '682 patents against all defendants and claims for infringement of the '314 and '652 patents against Apple, Google, Yahoo!, and AOL. (See D.I. 1, 153; Walters Decl., Ex. A, the '507 patent; Walters Decl., Ex. B, the '682 patent; Walters Decl., Ex. C, the '652 patent; Walters Decl., Ex. D, the '314 patent.) The four patents together contain 182 claims, and it was not until Interval served its infringement contentions on December 28, 2010 that Defendants were on notice of the claims asserted ("Asserted Claims"). Defendants have identified multiple prior art references that they contend invalidate the Asserted Claims. These prior art references cited in the Petitions include at least the following:

Patent-in-Suit 6,263,507

New Prior Art Cited in the Reexaminations or Art Presented in New Light1 · "Network Plus", Walter Bender et al., January 12-13, 1988 · "Cluster-Based Text Categorization: A Comparison of Category Search Strategies", Makoto Iwayama, July 913, 1995 · "The Fishwrap Personalized News System", Pascal R. Chesnais et al., June 1995

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Only two of the references identified for these reexaminations are not new prior art. The references relating to the reexamination for the '507 patent and `682 patent are all new prior art.
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· "Classifying News Stories using Memory Based Reasoning", Brij Masand, June 1992 · "WebWatcher: Machine Learning and Hypertext", Thorsten Joachims, et al., May 29, 1995 · JP Publication No. H07-114572 to Yuasa · "Wire Service Transmission Guidelines", Number 84-2, June 14, 1984 · "The Associated Press Stylebook and Libel Manual", The Associated Press, 1994 · · · · · · · · · · · · · · U.S. Patent No. 7,082,407 to Bezos U.S. Patent No. 6,466,918 to Spiegel et al. U.S. Patent No. 6,195,657 to Rucker et al. U.S. Patent No. 6,049,777 to Sheena U.S. Patent No. 6,681,369 to Meunier U.S. Patent No. 5,748,190 to Kjorsvik U.S. Patent No. 5,781,894 to Petrecca, et al U.S. Patent No. 5,913,040 to Rakavy, et al "Director Demystified", Roberts, Jason, 1995 U.S. Patent No. 5,740,549 to Reilly, et al U.S. Patent No. 5,796,945 to Tarabella U.S. Patent No. 5,748,190 to Kjorsvik "Buying a Real Computer Monitor," Popular Electronics, October 1984. U.S. Patent No. 5,913,040 to Rakavy, et al. (See Walters Decl., Ex. E, Request for Ex Parte

(hereafter "the Cited References"). 26 27

Reexamination and Detailed Statement in Support as to '507 patent (without exhibits); Walters Decl., Ex. F, Request for Inter Partes Reexamination and Detailed Statement in Support as to 28
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'682 patent (without exhibits); Walters Decl., Ex. G, Request for Ex Parte Reexamination and Detailed Statement in Support as to '652 patent (without exhibits); Walters Decl., Ex. H, Request for Inter Partes Reexamination and Detailed Statement in Support as to '314 patent (without exhibits).) As described in detail in the Petitions for Reexamination, the Patent Examiner either did not have, or did not rely upon, the majority of the Cited References during the prosecution of the Patents-in-Suit. (Id.) III. PETITIONS FOR REEXAMINATION

Any person at any time may file a request for reexamination with the PTO, identifying prior art patents or publications that may affect the validity of an issued patent. 35 U.S.C. §§ 301, 302. If, in response to the reexamination requests, the PTO determines that the cited prior art raises "a substantial new question of patentability affecting any claim of the patent," the PTO will grant the request and order reexamination of the patent. Id. at § 304. Once initiated, all reexamination proceedings must "be conducted with special dispatch." Id. at

§§ 305, 314; 37 C.F.R. § 1.550(a). Moreover, ex parte reexaminations of patents "involved in litigation . . . will have priority over all other cases." MANUAL
OF

PATENT EXAMINING

PROCEDURE §§ 2261, 2661 (8th ed., rev. 8, July 2010). At the conclusion of the reexamination proceeding, the PTO may cancel or confirm existing claims, or it may allow amended or completely new claims to issue. 35 U.S.C. § 307(a). 92% of all ex parte petitions for reexamination and 96% of all inter partes petitions for reexamination are granted. (See Walters Decl., Ex. I, Ex Parte Reexamination Filing Data-- Dec. 31, 2010; Walters Decl., Ex. J, Inter Partes Reexamination Filing Data--Dec. 31, 2010.) Of those cases in which a petition for reexamination is granted, 77% of all ex parte reexaminations and 90% of all inter partes reexaminations result in the claims being amended or cancelled. (See id.); see also Pacific Biosci. Labs., Inc. v. Pretika Corp., __ F. Supp. 2d __, No. C10-0231JLR, 2011 WL 65950, at *2-3 (W.D. Wash. Jan. 10, 2011) (granting stay because, among other things, "statistics published by the PTO. . .demonstrate that in over 75% of cases in which reexamination requests are granted, claims are either changed or cancelled"). Thus, in only 23% of ex parte reexaminations and in only 10% of inter partes reexaminations
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are all claims of a patent confirmed. (See Ex. I.) Interval, of course, would be precluded from litigating any Asserted Claims that are cancelled as a result of reexamination; likewise, Defendants would have intervening rights as to any amended claims at least for the period prior to issuance of any reexamination certificates. See 35 U.S.C. § 307(b). As such, if no stay is granted there exists a strong likelihood that some or all of the anticipated work to be conducted by the Parties and the Court prior to final disposition by the PTO would be for naught. IV. A. ARGUMENT AND AUTHORITY

This Court Has Broad Discretion To Stay This Case

"Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination." Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426­27 (Fed. Cir. 1988) (internal citations omitted). In passing the legislation establishing the reexamination proceeding, Congress stated its approval "to provide an inexpensive, expedient means of determining patent validity which, if available and practical, should be deferred to by the courts." ASCII Corp. v. STD Entm't USA, Inc., 844 F. Supp. 1378, 1380 (N.D. Cal. 1994) (citing Digital Magnetic Sys., Inc. v. Ansley, 213 U.S.P.Q. 290 (W.D. Okla. 1982)). Given the congressional intent that district courts use the PTO's "specialized expertise to reduce costly and time-consuming litigation[,]" courts can exercise their discretion to stay proceedings pending the conclusion of a reexamination. Atlantic Constr. Fabrics, Inc. v. Metrochem, Inc., No. 03-5645, 2007 WL 2963823, at *1 (W.D. Wash. Oct. 9, 2007) (internal quotations omitted); see also ASCII Corp., 844 F. Supp. at 1380 (noting that, in granting stay, courts have inherent power to stay a proceeding to prevent "costly pre-trial maneuvering which attempts to circumvent the reexamination procedure"). In deciding whether to stay a patent case pending the outcome of a reexamination proceeding, courts typically consider three factors: (1) whether a stay will clarify or simplify the issues in question and trial of a case; (2) the stage of the litigation; and (3) whether a stay will unduly prejudice or present a clear tactical disadvantage to the non-moving party. WreHol, LLC v. Pharos Sci. & Applications, No. C09-1642 MJP, 2010 WL 2985685, at *2 (W.D.
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Wash. July 23, 2010); F5 Networks, Inc. v. A10 Networks, Inc., No. C10-654MJP, 2010 WL 5138375, at *1-2 (W.D. Wash. Dec. 10, 2010); Donnelly Corp. v. Guardian Indus. Corp., No. 05-74444, 2007 WL 3104794, at *4 (E.D. Mich. Oct. 22, 2007); Card Tech. Corp. v. DataCard Corp., No. 05-2546, 2007 WL 2156320, at *3 (D. Minn. July 23, 2007). Considering these factors, district courts in the Western District of Washington and elsewhere in the Ninth Circuit routinely have stayed patent infringement cases based on a request for reexamination. See, e.g., Wre-Hol, LLC, 2010 WL 2985685, at *2; Pactool Int'l Ltd. v. Dewalt Indus. Tool Co., No. C06-5367BHS, 2008 WL 312677, at *1 (W.D. Wash. Feb. 1, 2008); see also ASCII Corp., 844 F. Supp. at 1381; Akeena Solar Inc. v. Zep Solar Inc., No. C 09-05040 JSW, 2010 WL 1526388, at *4 (N.D. Cal. Apr. 14, 2010); Ho Keung Tse v. Apple Inc., No. C 06-06573 SBA, 2007 WL 2904279, at *5 (N.D. Cal. Oct. 4, 2007).2 B. This Court Should Stay This Case

All three factors considered by courts in deciding whether to stay litigation pending reexamination weigh heavily in favor of staying these proceedings. 1. A Stay Is Likely to Simplify or Eliminate Issues in Question, Thereby Promoting Judicial Economy

The first factor--whether a stay may simplify the issues in question--strongly favors a stay of this action. The Federal Circuit recognizes that reexamination proceedings resulting in cancellation, clarification, or limitation of claims simplify litigation. See Ethicon, 849 F.2d at 1428. Indeed, "[o]ne purpose of the reexamination procedure is to eliminate trial on claims that are cancelled." Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983). Where the claim survives reexamination, trial of the issues can be facilitated "by providing the district court with the expert view of the PTO." Id.

District courts have recognized the efficiency of granting stays, like the one requested here, prior to the PTO's decision on whether to grant the reexamination request. See, e.g., Akeena Solar, Inc. v. Zep Solar Inc., No. 09-05040 JSW, 2010 WL 1526388, at *2 (N.D. Cal. April 14, 2010) (granting stay based on pending request, noting that "there is no `general prohibition against staying' an action simply because the PTO has not yet decided whether to order the inter partes reexamination"); see also ASCII Corp., 844 F. Supp. at 1381 (staying case before reexamination request was even filed but ordering that request be filed within 30 days).
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In the instant case, if this Court grants the Defendants' request to stay the litigation, the PTO will have time to review the requests for reexamination and the newly-presented prior art that will likely form the basis for cancellation or amendment of the claims. See Bausch & Lomb Inc. v. Alcon Labs, Inc., 914 F. Supp. 951, 953 (W.D.N.Y. 1996) (recognizing the PTO's "expertise in deciding issues of patentability" as a compelling reason to stay litigation). As explained above, the PTO liberally grants ex parte (92%) and inter parties (96%) reexamination requests, and the reexaminations will likely result in the cancellation or amendment of the great majority (77% for ex parte and 90% for inter partes) of claims reviewed during the proceedings. Because the reexaminations will likely result in the cancellation or amendment of the Asserted Claims, judicial efficiency strongly favors staying this litigation until the reexamination proceedings have concluded in order to avoid wasteful discovery and litigation efforts. See Implicit Networks, Inc. v. Advanced Micro Devices, Inc., No. C08-184JLR, 2009 WL 357902, at *2 (W.D. Wash. Feb. 9, 2009) (granting stay because, among other things, reexamination proceedings "could substantially limit or narrow the issues."). As one court noted, because "92% of patents being reexamined change in some way," the "Court cannot ignore this possibility" that it will "enabl[e] futile litigation that may have to be repeated if the patent changes." Aten Int'l Co. v. Emine Tech. Co., No. SACV 09-0843 AG(MLGx), 2010 WL 1462110, at *7 (C.D. Cal. April 22, 2010). Further, for the Patents-in-Suit, the reexaminations will be the first time that the novelty and/or nonobviousness of the Asserted Claims will be examined with a more thorough understanding of the existing prior art. It is, therefore,

probable that the intrinsic record for claim construction, including the prosecution history of the Patents-in-Suit during the reexamination process, will be vastly expanded by the reexamination of the Asserted Claims. For example, if the claims are amended in reexamination, or Interval makes arguments to the PTO in an attempt to overcome rejections based on the prior art, these actions will expand the intrinsic record the Court must consider for claim construction. See, e.g., CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) (during reexamination, patentee may "commit to a particular meaning for a patent term, which meaning
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is then binding in litigation"); In re Cygnus Telecomms. Tech., LLC, Patent Litig., 385 F. Supp. 2d 1022, 1024 (N.D. Cal. 2005) (noting that reexamination can provide court "a richer prosecution history" for claim construction). Failing to stay these proceedings will likely require the Court to revisit claim construction multiple times to account for ongoing developments in the parallel reexamination proceedings. Further, Section 307(b) of the patent statute provides that a third party has the absolute right to make, use, and sell any product that existed prior to the issuance of any amended or new claims that emerge from reexamination to the extent they are not covered by an original claim that survives reexamination unaltered. 35 U.S.C. § 307(b). Thus, Interval cannot

retroactively assert any new or amended claims against the Defendants should any new or amended claims emerge from the reexamination process. In any event, with the large number of diverse Defendants and accused products/services, the litigation will most likely be drastically changed as a result of reexamination. This factor militates heavily in favor of the Court entering a stay. 2. A Stay Is Appropriate Because Substantial Discovery, Claim Construction, Motion Practice, Pre-Trial, and Trial Work Remain

The second factor also favors entry of a stay. Similar to the circumstances presented in Wre-Hol, LLC, this case is in its infancy. 2010 WL 2985685, at *2. This Court just recently 18 entered the Scheduling Order in the case, setting a Markman hearing for July 2011 and the 19 initial trial for June 2012. (D.I. 178.) Under the Scheduling Order, the Defendants just recently 20 (on February 28, 2011) served Invalidity and Non-Infringement Contentions, and although 21 discovery has commenced, it is in its early stages and is not scheduled to conclude until 22 November 2011, leaving the balance of the substantive work in the case uncompleted. 23 Courts have stayed cases in similar stages to avoid potentially needless litigation efforts 24 and expenses. Pacific Biosci. Labs., Inc., 2011 WL 65950, at *4 (noting "the relatively early 25 stage of the litigation also weighs in favor of granting the stay"); Pacific Biosci. Labs. v. Nutra 26 Luxe MD, LLC, No. C10-0230JLR, 2011 WL 65947, at *4 (W.D. Wash. Jan. 10, 2011) ("Nutra 27 Luxe" case) (same); Pactool Int'l Ltd., 2008 WL 312677, at *1 (same). Stays also have been 28
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ordered in cases that were much further along than this case, including, for example: · Discovery and claim construction were complete, and the case was four months from trial. 3M Innovative Props. Co. v. DuPont Dow Elastomers LLC, No. 033364, 2005 WL 2216317, at *3 (D. Minn. Sept. 8, 2005). The case was eight years old and two months from trial. Middleton, Middleton, Inc. v. Minnesota Mining & Mfg. Co., No. 4:03-CV-40493, 2004 WL 1968669, at *8­9 (S.D. Iowa Aug. 24, 2004). The parties had conducted substantial discovery, filed summary judgment motions, and begun Markman claim construction briefing. Softview Computer Prods. Corp. v. Haworth, Inc., No. 97-CV-8815, 2000 WL 1134471, at *3, 56 U.S.P.Q.2d 1633, 1635 (S.D.N.Y. Aug. 9, 2000). The parties had completed substantial discovery, had conducted a pre-trial conference, and were scheduled to go to trial. Loffland Bros. Co. v. MidWestern Energy Corp., No. CIV-83-2255-E, 1985 WL 1483, 225 U.S.P.Q. 886, 887 (W.D. Okla. Jan. 3, 1985). The parties had completed substantial discovery, the pre-trial order was signed, and other than a handful of depositions, only trial remained. Grayling Indus., Inc. v. GPAC, Inc., No. 1:89-CV-451-ODE, 1991 WL 236196, 19 U.S.P.Q.2d 1872, 1873­74 (N.D. Ga. March 25, 1991). The case had been on file for more than two years. Lentek Int'l, Inc. v. Sharper Image Corp., 169 F. Supp. 2d 1360, 1363 (M.D. Fla. 2001).

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Given that stays may be granted at any time, a stay in this case, which is still in the beginning stage, will not result in lost effort by the parties or by this Court, and, on balance, likely will result in substantial savings. Factor two militates in favor of a stay. 3. Interval Will Not Be Unfairly Prejudiced By a Stay

The final factor--whether a stay will unfairly prejudice Interval or present a clear tactical advantage to Defendants--also weighs in favor of granting a stay. A stay will not prejudice Interval, but the failure to stay the case may work substantial prejudice on the Defendants should they be forced to expend substantial sums on litigation on Asserted Claims that may be substantially amended or outright canceled in the reexamination. First, Interval is a holding company and does not compete with the Defendants, so no "intangible" interests are at stake. (See D.I. 153.) Thus, there is no danger of Interval losing market share or customers or otherwise having its equitable rights affected should a stay be granted. Indeed, courts have
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routinely granted stays when, as here, the case is "a suit for money damages and plaintiff has never sought preliminary injunctive relief from the Court." Emhart Indus., Inc., 1987 WL 6314, at *2; see also Implicit Networks, Inc., 2009 WL 357902, at *3 ("[c]ourts have consistently found that a patent licensor cannot be prejudiced by a stay because monetary damages provide adequate redress for infringement"); Middleton, Inc., 2004 WL 1968669, at *8­9 (patentee never sold product and had no intention of doing so); SP Technologies, LLC v. HTC Corp., No. 08 C 3760, 2009 WL 1285933, at *3 (N.D. Ill. May 6, 2009) (ordering stay in patent case brought by non-practicing patent-holding company; noting that plaintiff "has not pointed to any separate business interests that might be jeopardized by a delay pending reexamination" and because plaintiff "can always move to recover damages for such sales at the end of the litigation if [it] is successful on its claims"). Further, Interval's delay in filing an infringement case based on patents that issued between six and ten years ago further confirms that Interval cannot reasonably assert that it would suffer any competitive harm as a result of a stay. Second, Interval can be fully compensated should it ultimately prevail after a stay. See Softview Computer Prods. Corp., 56 U.S.P.Q.2d at 1635 (patentee not prejudiced by stay pending reexamination because patentee would be entitled to damages if he ultimately prevailed); Implicit Networks, Inc., 2009 WL 357902, at *3 (same). Thus, a stay will not monetarily harm Interval. Third, as noted above, Interval delayed many years before filing this suit and is accusing systems that it knew or should have known of years ago. It is in no position to argue that staying this suit pending reexamination will cause it irreparable harm. In any event, numerous courts have found that that mere delay completing a suit does not demonstrate undue prejudice. See, e.g., id., citing Sorensen v. Black & Decker Corp., No. 06cv1572BTM, 2007 WL 2696590, at *4 (S.D. Cal. Sep. 10, 2007) ("[t]he general prejudice of having to wait for resolution is not a persuasive reason to deny the motion for stay"); In contrast, if a stay is not entered, the potential for wasting of resources, both by the Court and the parties, is enormous. This potential is starkly illustrated by two related decisions
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by the Federal Circuit: In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) and Translogic Tech., Inc. v. Hitachi, Ltd., 250 Fed. Appx. 988 (Fed. Cir. 2007), which concerned Translogic's suit for infringement of a patent that was simultaneously involved in reexamination. The Translogic district court litigation proceeded in parallel with the PTO reexamination, but both proceedings produced dramatically different results. After several years of protracted litigation, the district court case resulted in a jury verdict and judgment of infringement and validity, and a damages award in the plaintiff's favor. But while all of that was going on in the district court, the PTO rejected the asserted claims of the same patent in reexamination. See In re Translogic, 504 F.3d at 1250. Appeals were taken of both the district court judgment and the PTO reexamination decision, and both were assigned to the same appellate panel at the Federal Circuit. Id. On appeal, the Federal Circuit affirmed the PTO's rejection of the asserted claims and found that the reexamination results trumped the district court judgment, vacating the district court judgment and directing the district court to dismiss the infringement case. See Translogic (Hitachi), 250 Fed. Appx. at 988. The end result was that six years of district court litigation, with two jury trials and at least one summary judgment ruling, were all for naught, at untold cost to the parties and time lost by the district court. Defendants face substantial potential prejudice if the stay is not granted (above and beyond being forced to litigate claims that are likely to be changed or cancelled). For example, despite the lack of merit in Interval's allegations, there exists a possibility that a judgment could be entered in Interval's favor that requires some or all of the Defendants to pay damages to Interval. As numerous courts have recognized, there may be no practical way for these

Defendants to recover those damages from Interval should the PTO later determine that Asserted Claims are invalid. See, e.g., Everything for Love.com, Inc. v. Tender Loving Things, Inc., No. CIV 02-2605-PHX-EHC, 2006 WL 2091706, at *3­4 (D. Ariz. July 21, 2006); Broadcast Innovation, L.L.C., 2006 WL 1897165, at *10­11; Bausch & Lomb, Inc., 914 F. Supp. at 952­53. Thus, Defendants could be required to pay a judgment on an invalid patent, without the ability to recover the monies paid. As these courts have noted, "[s]uch an outcome
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is unacceptable." Everything for Love.com, Inc., 2006 WL 2091706, at *4 (quoting Bausch & Lomb, Inc., 914 F. Supp. at 953); Broadcast Innovation, L.L.C., 2006 WL 1897165, at *7. IV. CONCLUSION

By granting a stay now, with a majority of the substantive work in the case yet to be begun, the Court can avoid the need for the parties and the Court to expend significant time, effort and resources that likely will be rendered moot by the PTO's reexamination of the Patents-in-Suit. Moreover, a stay will not prejudice Interval, but could spare the Defendants from substantial prejudice. For these reasons, and those stated above, Defendants respectfully request that the Court enter a stay of the litigation pending the completion of the reexaminations of the Patents-in-Suit.

DATED: March 17, 2011

Respectfully Submitted, By: s/ Mark P. Walters Mark P. Walters (WSBA #30819) Dario A. Machleidt (WSBA #41860) FROMMER LAWRENCE & HAUG LLP 1191 Second Avenue Suite 2000 Seattle, WA 98101 Tel: [phone] Fax: [phone] E-mail: [e-mail] Admitted Pro Hac Vice Michael A. Jacobs Matthew I. Kreeger Richard S.J. Hung Francis Ho Eric W. Ow MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Tel: [phone] Fax: [phone] Attorneys for Defendant YAHOO! INC.

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O'MELVENY & MYERS LLP By: s/ Brian M. Berliner Brian M. Berliner, CA Bar No. 156732 (pro hac vice) Neil L. Yang, CA Bar No. 262719 (pro hac vice) 400 South Hope Street Los Angeles, CA 90071 Telephone: [phone] Facsimile: 213.430.6407 Email: [e-mail]; [e-mail] George A. Riley, CA Bar No. 118304 (pro hac vice) David S. Almeling, CA Bar No. 235449 (pro hac vice) Two Embarcadero Center, 28th Floor San Francisco, CA 94111-3823 Telephone: [phone] Facsimile: 415.984.8701 Email: [e-mail]; [e-mail] YARMUTH WILSDON CALFO PLLC Scott T. Wilsdon, WSBA No. 20608 Jeremy E. Roller, WSBA No. 32021 818 Stewart Street, Suite 1400 Seattle, WA 98101 Telephone: [phone] Facsimile: 206.516.3888 Email: [e-mail]; [e-mail] Attorneys for Defendant Apple Inc.

17 18 19 20 21 22 23 24 25 26 27 28 Michael G. Rhodes (pro hac vice) Heidi L. Keefe (pro hac vice) Mark R. Weinstein (pro hac vice) Christen M.R. Dubois (pro hac vice) Elizabeth L. Stameshkin (pro hac vice) 3175 Hanover St. Palo Alto, CA 94304-1130
DEFENDANTS' JOINT MOTION TO STAY PROCEEDINGS PENDING REEXAMINATIONS No. 2:10-CV-01385-MJP - PAGE 13
FROMMER LAWRENCE & HAUG LLP 1191 SECOND AVENUE SEATTLE,WASHINGTON 98101 [phone]

COOLEY LLP By: s/ Christopher B. Durbin Christopher B. Durbin (WSBA #41159) COOLEY LLP 719 Second Avenue, Suite 900 Seattle, WA 98104 Tel: [phone] Fax: [phone] Email: [e-mail]

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Tel: [phone] Fax: [phone] Attorneys for Defendant FACEBOOK, INC.

KLARQUIST SPARKMAN, LLP 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 By: s/ John D. Vandenberg Arthur W. Harrigan, Jr. Christopher T. Wion DANIELSON HARRIGAN LEYH & TOLLEFSON 999 Third Avenue, Ste. 4400 Seattle, Washington 98104 Telephone: [phone] Facsimile: [phone] Email: [e-mail] [e-mail] J. Christopher Carraway, WSBA NO. 37944 Kristin L. Cleveland (pro hac vice) Klaus H. Hamm (pro hac vice) Derrick W. Toddy (pro hac vice) John D. Vandenberg, WSBA NO. 38445 KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] Attorneys for Defendants eBay Inc., Netflix, Inc., Office Depot, Inc., and Staples, Inc. STOKES LAWRENCE, P.S. By: s/ Shannon M. Jost Shannon M. Jost (WSBA #32511) Scott A.W. Johnson (WSBA #15543) Aneelah Afzali (WSBA #34552) Admitted Pro Hac Vice Kevin X. McGann Dimitrios T. Drivas
DEFENDANTS' JOINT MOTION TO STAY PROCEEDINGS PENDING REEXAMINATIONS No. 2:10-CV-01385-MJP - PAGE 14
FROMMER LAWRENCE & HAUG LLP 1191 SECOND AVENUE SEATTLE,WASHINGTON 98101 [phone]

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John E. Handy Aaron Chase WHITE & CASE LLP 1155 Avenue of the Americas New York, NY 10036-2787 Warren S. Heit Wendi R. Schepler WHITE & CASE LLP 3000 El Camino Real Building 5, 9th Floor Palo Alto, CA 94306 Attorneys for Defendants Google Inc. and YouTube, LLC WILDMAN, HARROLD, ALLEN & DIXON LLP By: s/ John S. Letchinger John S. Letchinger (pro hac vice) [e-mail] Douglas S. Rupert (pro hac vice) [e-mail] 225 West Wacker Drive, Suite 2800 Chicago, Illinois 60606 Tel: [phone] Kevin C. Baumgardner, WSBA No. 14263 [e-mail] Steven W. Fogg, WSBA No. 23528 [e-mail] CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP 1001 4th Avenue, Suite 3900 Seattle, Washington 98154 Tel: [phone] Attorneys for Defendant OfficeMax North America, Inc. SUMMIT LAW GROUP PLLC By: s/ Cortney S. Alexander Molly A. Terwilliger, WSBA #28449 315 5th Avenue S, Suite 1000 Seattle, WA 98104.2682 Tel: [phone] Fax: [phone]
DEFENDANTS' JOINT MOTION TO STAY PROCEEDINGS PENDING REEXAMINATIONS No. 2:10-CV-01385-MJP - PAGE 15
FROMMER LAWRENCE & HAUG LLP 1191 SECOND AVENUE SEATTLE,WASHINGTON 98101 [phone]

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[e-mail] Gerald F. Ivey (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, N.W. Washington, D.C. 20001-4413 Tel: [phone] [e-mail] Robert L. Burns (pro hac vice) Elliot C. Cook (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Two Freedom Square 11955 Freedom Drive, Suite 800 Reston, VA 20190-5675 Tel: [phone] [e-mail] [e-mail] Cortney S. Alexander (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 3500 SunTrust Plaza 303 Peachtree Street, NE Atlanta, GA 30308-3263 Tel: [phone] [e-mail] Attorneys for Defendant AOL Inc.

DEFENDANTS' JOINT MOTION TO STAY PROCEEDINGS PENDING REEXAMINATIONS No. 2:10-CV-01385-MJP - PAGE 16

FROMMER LAWRENCE & HAUG LLP 1191 SECOND AVENUE SEATTLE,WASHINGTON 98101 [phone]

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CERTIFICATE OF SERVICE I hereby certify that on March 17, 2011, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following counsel of record: Attorneys for Plaintiff Interval Licensing LLC Justin A. Nelson ([e-mail]) Eric J. Enger ([e-mail]) Matthew R. Berry ([e-mail]) Max L. Tribble ([e-mail]) Michael F. Heim ([e-mail]) Nathan J. Davis ([e-mail]) Edgar G. Sargent ([e-mail]) DATED: March 17, 2011 s/ Mark P. Walters Mark P. Walters, WSBA No. 30819 Dario A. Machleidt, WSBA No. 41860 FROMMER LAWRENCE & HAUG LLP

DEFENDANTS' JOINT MOTION TO STAY PROCEEDINGS PENDING REEXAMINATIONS No. 2:10-CV-01385-MJP - PAGE 17

FROMMER LAWRENCE & HAUG LLP 1191 SECOND AVENUE SEATTLE,WASHINGTON 98101 [phone]