mate. LLC. v. Advanced Lighting Concepts, LLC

Opinion

1 2 3 4 5 UNITED STATES DISTRICT COURT 6 SOUTHERN DISTRICT OF CALIFORNIA 7 mate, LLC, Case No.: 22-CV-1095-CAB-DEB 8 Plaintiff, ORDER GRANTING MOTION TO 9 v. STAY PENDING INTER PARTES REVIEW 10 Advanced Lighting Concepts, LLC, d/b/a Environmental Lights, 11 [Doc. Nos. 61, 76] Defendant. 12 13 14 This matter is before the Court on Defendant’s motion to stay this patent 15 infringement case during the pendency of Inter Partes Review (“IPR”) petitions filed by 16 Defendant concerning claims in each of the six patents at issue in this case. Plaintiff 17 opposes the motion, and the Court finds it suitable for determination on the papers 18 submitted and without oral argument. Having considered the submissions of the parties,1 19 the motion is GRANTED. 20 I. Background 21 On July 26, 2022, Plaintiff mate, LLC, filed a complaint against Defendant 22 Advanced Lighting Concepts, LLC, alleging infringement of six U.S. patents. On March 23 22, 2023, Magistrate Judge Butcher issued a case management order setting a claim 24 construction hearing for November 7, 2023. [Doc. No. 35.] The parties have filed their 25 26 27 1 Plaintiff’s motion for leave to file a sur-reply [Doc. No. 76] is GRANTED. The Court considered 28 1 claim construction briefs and responses. The fact discovery deadline is not until March 15, 2 2023, and the deadline for completion of all discovery is June 7, 2024. 3 On August 31, 2023, Defendant filed the instant motion to stay this case pending 4 resolution of six IPR petitions it filed on August 3 and 4, 2023, challenging the validity of 5 each of the six patents at issue. Based on the timing of the IPR filings, a decision by the 6 Patent Trial and Appeal Board (“PTAB”) on whether to institute the IPRs should come no 7 later than February 2024, and, if the PTAB institutes IPR, its final decision would come 8 approximately twelve months later. 9 II. Discussion 10 Courts have inherent power to manage their dockets and stay proceedings. See 11 Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). “The moving party bears the burden of 12 demonstrating that a stay is appropriate.” Finjan, Inc. v. Symantec Corp., 139 F. Supp. 3d 13 1032, 1035 (N.D. Cal. 2015). Courts generally consider three factors in determining 14 whether to impose a stay pending parallel proceedings before the Patent Trial and Appeal 15 Board (“PTAB”): “(1) whether discovery is complete and whether a trial date has been set; 16 (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether 17 a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving 18 party.” TAS Energy, Inc., v. San Diego Gas & Elec. Co., No. 12cv2777-GPC(BGS), 2014 19 WL 794215, at *3 (S.D. Cal. Feb. 26, 2014). Judicial consideration is not limited to these 20 factors, but rather can include a review of the totality of the circumstances. See Murata 21 Mach. USA v. Daifuku Co., 830 F.3d 1357, 1362 (Fed. Cir. 2016) (“Attendant to the district 22 court’s inherent power to stay proceedings is the court’s discretionary prerogative to 23 balance considerations beyond those captured by the three-factor stay test.”). A court’s 24 consideration of a motion to stay should be guided by “the liberal policy in favor of granting 25 motions to stay proceedings pending the outcome of USPTO reexamination or reissuance 26 proceedings.” ASCII Corp. v. STD Entm’t USA, Inc., 844 F. Supp. 1378, 1381 (N.D. Cal. 27 1994). 28 1 Each of the above factors supports a stay here. First, contrary to Plaintiffs 2 ||contention in its opposition, this case is not in an advanced stage. The Court has yet to 3 ||construe the claims, and many months remain before discovery is complete. Second, 4 || notwithstanding the fact that Defendant’s IPR petitions do not challenge the validity of all 5 the asserted claims, if IPR is instituted, resolution by the PTAB would likely simplify 6 || the issues before the Court and potentially streamline this case. See LELO, Inc. v. Standard 7 || Innovation (US) Corp., No. 13-CV-01393-JD, 2014 WL 2879851, at *3 (N.D. Cal. June 8 2014) (rejecting Plaintiff's argument that “simplification will not happen here because, 9 ||no matter what, some claims will survive the PTAB review and this lawsuit will continue,” 10 holding that “the standard is simplification of the district court case, not complete 11 elimination of it by the PTAB”). Finally, even if Plaintiff is correct that the chances of the 12 PTAB even instituting IPR on any of the patents is low, such a short delay until February 13 2024 (when the PTAB is expected to issue its decision on whether to institute IPR) will not 14 || unduly prejudice Plaintiff. If the PTAB declines to institute IPR on any of the patents, this 15 || case will be ready for the claim construction hearing and can proceed without further delay. 16 II. Conclusion 17 For the foregoing reasons, a stay of this litigation pending the PTAB’s decision on 18 || whether to institute IPR on the each of the six patents at issue is justified. Accordingly, it 19 |/is hereby ORDERED that the motion to stay is GRANTED, and this case is STAYED. 20 || All unexpired case management deadlines are VACATED. The parties shall provide 21 || notice to the Court within five days of the PTAB’s decision(s) on whether to institute IPR 22 any of the patents. 23 It is SO ORDERED. 24 Dated: October 10, 2023 (WE 25 Hon. Cathy Ann Bencivengo 26 United States District Judge 27 28