Amazon.com, Inc et al v. Uniloc USA, Inc et al

Filing 33

ORDER granting defendants' 29 Motion to Stay Case Pending Inter Partes Review; parties to file a joint status report no more than five (5) days after the PTAB completes the final IPR proceeding; in addition, parites to file a Joint Status Report due by 7/1/2018 and every six (6) months thereafter until the court lifts the stay, signed by Judge James L. Robart.(SWT)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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AMAZON.COM, INC., et al.,

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Plaintiffs,
v.

CASE NO. C17-1307JLR
ORDER GRANTING MOTION
TO STAY

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UNILOC USA, INC., et al.,
Defendants.

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I.

INTRODUCTION

Before the court is Defendants Uniloc USA, Inc. and Uniloc Luxembourg, S.A.’s

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(collectively, “Uniloc”) motion to stay this case pending inter partes review (“IPR”) of

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the three patents-in-suit by the Patent Trial and Appeal Board (“PTAB”) of the United

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States Patent and Trademark Office (“PTO”). (Mot. (Dkt. # 29); see also Not. of Stay

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(Dkt. # 31).) On the same day that Uniloc filed its motion to stay in this court, Uniloc

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filed a nearly identical motion in the co-pending case in the Eastern District of Texas,

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Uniloc USA, Inc., et al. v. RingCentral, Inc., No. 2-17-cv-00354 (E.D. Tex.). (See Resp.

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(Dkt. # 32) at 2.) On February 12, 2018, the Eastern District of Texas granted Uniloc’s

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motion to stay pending IPR review. (See id.; see also Not. of Stay at 2-4.) In light of the

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Eastern District of Texas’s decision, Plaintiffs Amazon.com, Inc. and Amazon Web

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Services, Inc. (collectively, “Amazon”) do not oppose Uniloc’s motion. (See Resp. at 2.)

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The court has considered the parties’ submissions regarding the motion, the relevant

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portions of the record, and the applicable law. Being fully advised, 1 the court GRANTS

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the motion for the reasons set forth below.

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II.

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BACKGROUND AND ANALYSIS

This case involves three patents-in-suit: U.S. Patent Nos. 7,804,948 (the “’948

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Patent”), 7,853,000 (the “’000 Patent”), and 8,571,194 (the “’194 Patent”). (Compl.

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(Dkt. # 1) ¶ 11; Mot. at 2.) Uniloc filed a motion to dismiss on October 19, 2017, in part

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because of the first-filed co-pending case in the Eastern District of Texas. (MTD (Dkt.

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# 18) at 1.) In response, Amazon informed the court that it had moved to transfer the

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Eastern District of Texas proceedings to this court based on a forum selection clause.

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(MTD Resp. (Dkt. # 20) at 2.) Due in part to the pending motion to transfer in the

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Eastern District of Texas, the court delayed issuing an order regarding initial disclosures

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and a joint status report. (12/8/17 Order (Dkt. # 27) (citing Fed R. Civ. P. 16(b)(2) and

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Local Rules W.D. Wash. LCR 16(a)).) Seven IPRs have now been instituted that

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Neither party requests oral argument on the motion (Mot. at 1; Resp. at 1) and the court
determines that oral argument would not be helpful to its disposition of the motion. See Local
Rules W.D. Wash. LCR 7(b)(4).

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collectively involve the three patents-in-suit. 2 (Mot. at 3.) In addition, the Eastern

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District of Texas has stayed the related case pending IPR review. (Not. of Stay at 2, Ex.

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A (Dkt. # 31-1).)

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“Courts have inherent power to manage their dockets and stay proceedings,

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including the authority to order a stay pending conclusion of a PTO reexamination.”

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Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (internal citation

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omitted). Courts in the Ninth Circuit “often grant stays pending [the] IPR process in light

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of the ‘liberal policy in favor of granting motions to stay proceedings pending the

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outcome of [PTO] reexamination or reissuance proceedings.’” Roche Molecular Sys.,

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Inc. v. Cepheid, No. C-14-3228-EDL, 2015 WL 124523, at *3 (N.D. Cal. Jan. 7, 2015)

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(quoting Evolutionary Intelligence LLC v. Yelp Inc., No. C-13-03587 DMR, 2013 WL

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6672451, at *8 (N.D. Cal. Dec. 18, 2013)) (collecting cases); see also Drink Tanks Corp.

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v. GrowlerWerks, Inc., No. 3:16-cv-410-SI, 2016 WL 3844209, at *2 (D. Or. July 15,

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2016) (quoting Semiconductor Energy Lab. Co. v. Chimei Innolux Corp., No. SACV

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12-21-JST (JPRx), 2012 WL 7170593, at *4 (C.D. Cal. Dec. 19, 2012) (“Generally,

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courts apply a ‘liberal policy in favor of granting motions to stay proceedings pending the

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outcome of PTO IPR proceedings.’”)). In deciding whether to stay litigation pending

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IPR proceedings, courts examine “(1) the stage of the case; (2) whether a stay will

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simplify the court proceedings; and (3) whether a stay would unduly prejudice or present

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a clear tactical disadvantage to the non-moving party.” Roche Molecular Sys., 2015 WL

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The seven IPRs include: IPR2016-01756, IPR2017-00058, IPR2017-00198,
IPR2017-00597, IPR2017-01685, IPR2017-1683, and IPR2017-1684. (Mot. at 2.)

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124523, at *3. Whether to grant a stay falls within the court’s discretion. Drink Tanks,

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2016 WL 3844209, at *2 (citing CANVS Corp. v. United States, 118 Fed. Cl. 587, 591

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(2014)). Here, all three factors favor granting the stay.

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First, this case is still at its earliest stage as the court has not even issued an order

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regarding initial disclosures and a joint status report. (See 12/8/17 Order.) Second, a stay

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will likely simplify the proceedings as the PTAB has instituted IPR review of all three

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patents-in-suit. (See Mot. at 2-3.) Third, a stay would not unduly prejudice Amazon—

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Amazon does not oppose the motion. (See Resp. at 2.) Therefore, the court finds that the

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relevant factors favor staying this case pending the IPR reviews of the ’948 Patent, the

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’000 Patent, and the ’194 Patent.

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III.

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CONCLUSION

For the foregoing reasons, the court GRANTS Uniloc’s motion (Dkt. # 29) and

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STAYS this case pending final exhaustion of the IPR proceedings to which the ’948

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Patent, the ’000 Patent, and the ’194 Patent are presently subject to. The court ORDERS

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the parties to file a joint status report no more than five (5) days after the PTAB

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completes the final IPR proceeding regarding the ’948 Patent, the ’000 Patent, and the

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’194 Patent or those proceedings are terminated in some other manner. In addition, the

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court ORDERS the parties to file a joint status report on July 1, 2018, and every six (6)

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months thereafter until the court lifts the stay. This stay is effective, but without

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prejudice, to Uniloc’s pending motion to dismiss (Dkt. # 18) and Amazon’s opposition to

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that motion (Dkt. # 20).

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Dated this 15th day of February, 2018.

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A

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JAMES L. ROBART
United States District Judge

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ORDER - 5