International Business Machines Corporation v. Zillow Group Inc et al

Filing 184

MINUTE ORDER: The stay of Case No. C20-1130, which was imposed by Minute Order entered 12/23/2020, is LIFTED, except that proceedings involving United States Patent No. 7,543,234 ("the '234 Patent") remain stayed pending a decision by the United States Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") on the inter partes review ("IPR") petition filed by defendants Zillow Group, Inc. and Zillow, Inc. (collectively, "Zillow" ;) on 7/23/2021. The parties are DIRECTED to file a Joint Status Report within seven (7) days after the PTAB issues a final decision in the IPR proceedings involving United States Patent Nos. 7,076,443 or 8,315,904, as to which related claims in Case No. C20-851 are stayed, or a ruling concerning the IPR petition involving the '234 Patent. Plaintiff International Business Machines Corporation ("IBM") is DIRECTED to file, on or before 10/29/2021, infringement contentions as to all patents-in-suit in Case No. C20-1130 including the '234 Patent. Zillow is DIRECTED to file, on or before 11/19/2021, invalidity and non-infringement contentions as to all patents-in-suit in Case No. C20-1130 other than the '234 Patent. Any motion pursuant to Federal Rule of Civil Procedure 12 challenging their validity (patentability) under Section 101 of the Patent Act shall be filed on or before 12/16/2021, and noted for January 1/28/2021. Any response to such mo tion shall be filed on or before 1/20/2021, and any reply shall be filed by the noting date. The Court declines to set a trial date or related deadlines at this time. Zillow's request, docket no. 181 , to modify the Amended Stipulated Protective Order, docket no. 134 (as altered by Minute Order, docket no. 133 ), is DENIED as moot. Authorized by Judge Thomas S. Zilly. (MW)

Case 2:20-cv-00851-TSZ Document 184 Filed 10/06/21 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,
v.
ZILLOW GROUP, INC.; and
ZILLOW, INC.,

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Defendants.
INTERNATIONAL BUSINESS
MACHINES CORPORATION,
Plaintiff,

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C20-851 TSZ

C20-1130 TSZ

v.
ZILLOW GROUP, INC.; and
ZILLOW, INC.,

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MINUTE ORDER

Defendants.

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The following Minute Order is made by direction of the Court, the Honorable
18 Thomas S. Zilly, United States District Judge:
(1)
Having reviewed the parties’ Joint Status Reports, docket nos. 173 and 181
in Case No. C20-851, and the records in both pending matters, the Court ORDERS as
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(a)
The stay of Case No. C20-1130, which was imposed by Minute
Order entered December 23, 2020, is LIFTED, except that proceedings involving
United States Patent No. 7,543,234 (“the ’234 Patent”) remain stayed pending a

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MINUTE ORDER - 1

Case 2:20-cv-00851-TSZ Document 184 Filed 10/06/21 Page 2 of 3

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decision by the United States Patent and Trademark Office’s Patent Trial and
Appeal Board (“PTAB”) on the inter partes review (“IPR”) petition filed by
defendants Zillow Group, Inc. and Zillow, Inc. (collectively, “Zillow”) on July 23,
2021. The parties are DIRECTED to file a Joint Status Report within seven (7)
days after the PTAB issues a final decision in the IPR proceedings involving
United States Patent Nos. 7,076,443 or 8,315,904, as to which related claims in
Case No. C20-851 are stayed, or a ruling concerning the IPR petition involving the
’234 Patent. The parties shall refrain from filing unilateral status reports, notices,
or supplemental materials regarding PTAB matters or actions in other districts 1
involving one or more of the patents at issue in this litigation; if the parties cannot
agree on the status or relevance of rulings in other proceedings, they shall set forth
their respective views in a single document submitted jointly.

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(b)
Plaintiff International Business Machines Corporation (“IBM”) is
DIRECTED to file, on or before October 29, 2021, infringement contentions as to
all patents-in-suit in Case No. C20-1130 including the ’234 Patent. Zillow is
DIRECTED to file, on or before November 19, 2021, invalidity and noninfringement contentions as to all patents-in-suit in Case No. C20-1130 other than
the ’234 Patent.

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(c)
With respect to the patents-in-suit in Case No. C20-1130 other than
the ’234 Patent, any motion pursuant to Federal Rule of Civil Procedure 12
challenging their validity (patentability) under Section 101 of the Patent Act,
35 U.S.C. § 101, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), or its
progeny, shall be filed on or before December 16, 2021, and noted for January 28,
2021. Any response to such motion shall be filed on or before January 20, 2021,
and any reply shall be filed by the noting date.

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(2)
The Court declines to set a trial date or related deadlines at this time. The
Court appreciates counsel’s efforts to propose a briefing schedule for claim construction
and dispositive motion practice, but given the parties’ dispute concerning the sequence of

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The Court is aware of the ongoing case in the Southern District of New York captioned Chewy,

18 Inc. v. Int’l Bus. Machs. Corp., Case No. 1:21-cv-1319-JSR. Zillow has filed three separate

notices, docket nos. 174, 176, & 177 in Case No. C20-851, concerning scheduling and other non-

19 dispositive docket entries in the Chewy case, but none of them reflect the current date set for the
claim construction hearing, i.e., October 8, 2021. See 6th Am. Revised Civil Case Mgmt. Plan

20 (S.D.N.Y. Case No. 1:21-cv-1319-JSR, docket no. 79). In the event that a claim construction

order or a dispositive ruling is issued in the Chewy case, the parties shall file an appropriate Joint
Status Report; another district’s case management plans, which are subject to change, and other
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interim materials are not, however, of much benefit to the Court, and they clutter up the docket
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MINUTE ORDER - 2

Case 2:20-cv-00851-TSZ Document 184 Filed 10/06/21 Page 3 of 3

1 infringement contentions in Case No. C20-1130 and discovery in Case No. C20-851, the
Court concludes that a scheduling order should not be entered until after it rules on any
2 Rule 12 - § 101 motion in Case No. C20-1130. Zillow’s request, docket no. 181, to
modify the Amended Stipulated Protective Order, docket no. 134 (as altered by Minute
3 Order, docket no. 133), is DENIED as moot.
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(3)
record.

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

Dated this 6th day of October, 2021.

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Ravi Subramanian
Clerk

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s/Gail Glass
Deputy Clerk

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MINUTE ORDER - 3