International Business Machines Corporation v. Zillow Group Inc et al

Filing 147

MINUTE ORDER: Having reviewed the parties' supplemental briefs, docket nos. 139 and 140 , respectively, the Court STAYS the proceedings in this matter with regard to U.S. Patents Nos. 7,072,849 (the "'849 Patent"), 7,076,443 (the "'443 Patent"), and 8,315,904 ( the "'904 Patent") pending resolution of the inter partes review ("IPR") petitions before the Patent Trial and Appeal Board ("PTAB") of the U.S. Patent and Trad emark Office. Defendant's unopposed motion for clarification, docket no. 145 , is GRANTED. The Court is considering the appointment of a Rule 706 expert to assist in all stages of this litigation. At the status conference, the parti es shall be prepared to discuss whether an expert for each side should be permitted to present a 30-60 minute tutorial on patentability in advance of the Court's consideration of the issue. In addition, the parties shall address whether the Court should appoint a Rule 706 expert to provide an independent § 101 analysis on the '183 Patent and/or other patents, and whether the Rule 706 expert should be asked to provide a tutorial in advance of the Court's consideration of patentability. Authorized by Judge Thomas S. Zilly.(MW)

Case 2:20-cv-00851-TSZ Document 147 Filed 01/19/21 Page 1 of 3

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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INTERNATIONAL BUSINESS
MACHINES CORPORATION,

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Plaintiff,
C20-851 TSZ
v.
MINUTE ORDER
ZILLOW GROUP, INC.; and ZILLOW,
INC.,

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Defendants.
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The following Minute Order is made by direction of the Court, the Honorable
Thomas S. Zilly, United States District Judge:
(1)
Having reviewed the parties’ supplemental briefs, docket nos. 139 and 140,
respectively, the Court STAYS the proceedings in this matter with regard to U.S. Patents
Nos. 7,072,849 (the “’849 Patent”), 7,076,443 (the “’443 Patent”), and 8,315,904 ( the
“’904 Patent”) pending resolution of the inter partes review (“IPR”) petitions before the
Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office.
Defendant has advocated in favor of an immediate stay. Plaintiff agrees that a stay would
be appropriate if the PTAB grants defendant’s petitions to institute IPR proceedings, but
contends that, during the interim, it should be permitted to conduct discovery and
challenge the claim construction positions defendant has taken in this case, which are
allegedly inconsistent with the arguments made to the PTAB. The Court is not persuaded
by plaintiff’s arguments. The parties anticipate that the PTAB will rules on the IPR
petitions in March 2021, and the Court can then reconsider the appropriateness of this
stay in light of the PTAB’s actions. Even if the Court did not stay the claims involving
the ’849, ’443, and ’904 Patents, discovery relating to those matters would lag behind
proceedings involving the proposed bellwether, namely U.S. Patent No. 9,245,183 (the
“’183 Patent”), and possibly the claims involving U.S. Patents No. 7,187,389 (the “’389
Patent”) and 9,158,789 (the “’789 Patent”). See Minute Order at ¶¶ 5(a)(i)(A)&(B)
(docket no. 125). In addition, to the extent that defendant has expressed different views
in different forums, no purpose would be served by this Court deciding the issues while
the IPR petitions are pending before the PTAB.
MINUTE ORDER - 1

Case 2:20-cv-00851-TSZ Document 147 Filed 01/19/21 Page 2 of 3

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(2)

In light of the above-imposed stay, the following claims remain pending:
’389
Patent
Redpath

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Zillow Group Media
Zillow Mobile Apps

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Zillow Offers

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X

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Zillow Premier Agent

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Zillow Promoted Communities

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’183
Patent
Haas

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X

X

’789
Patent
Garrett
X

X

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’346
Patent
Hinton

X

Zillow Website

X

X
X

X

X

X

At the status conference on Friday, January 22, 2021, the parties shall be prepared to
address the following issues:
(a)
whether the Court should consider patentability (i.e., any challenge
under 35 U.S.C. § 101) on the ’183 Patent first (a bellwether approach) or as to
more or all of the patents identified in the above chart at the same time;

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(b)
what briefing schedule the Court should establish depending on its
ruling as to the issue in Paragraph 2(a), above;

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(c)
whether materials beyond the patent and prosecution history must be
considered in connection with a § 101 analysis;

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(d)
whether the Court should issue a scheduling order before or after
ruling on whether patentability may be decided in advance of discovery and, if so,
whether the bellwether and/or other patents pass muster under § 101;
(e)
if the ’183 Patent is not consistent with the requirements of § 101,
whether the claims and counterclaims involving Zillow Premier Agent should be
separated from this case and joined into Case No. C20-1130 TSZ;
(f)
if any patent survives § 101 review, how the litigation should
proceed, including whether consumer-facing and business-facing products should
be bifurcated, any issues relating to discovery, and the scope, timing, and
procedures for claim construction and indefiniteness challenges; and
(g)

any other matters raised in the Joint Status Report, docket no. 131

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(3)
Defendant’s unopposed motion for clarification, docket no. 145, is
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all stages of this litigation.
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MINUTE ORDER - 2

Case 2:20-cv-00851-TSZ Document 147 Filed 01/19/21 Page 3 of 3

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(4)
At the status conference, the parties shall be prepared to discuss whether an
expert for each side should be permitted to present a 30-60 minute tutorial on
2 patentability in advance of the Court’s consideration of the issue. In addition, the parties
shall address whether the Court should appoint a Rule 706 expert to provide an
3 independent § 101 analysis on the ’183 Patent and/or other patents, and whether the
Rule 706 expert should be asked to provide a tutorial in advance of the Court’s
4 consideration of patentability.
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(5)
record.

The Clerk is directed to send a copy of this Minute Order to all counsel of

Dated this 19th day of January, 2021.

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William M. McCool
Clerk

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s/Gail Glass
Deputy Clerk

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MINUTE ORDER - 3