Case 3:15-cv-05007-RS Document 205 Filed 06/15/16 Page 1 of 2
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`Case No. 15-cv-05007-RS
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`ORDER STAYING ACTION
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`CORE WIRELESS LICENSING S.A.R.L.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Plaintiff filed a motion to stay this proceeding with respect to four of the five patents in
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`suit, in light of recently-instituted inter partes review (“IPR”) proceedings before the U.S. Patent
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`and Trademark Office. Courts in this District look to three factors when determining whether to
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`stay a patent infringement case pending review or reexamination of the patents: “(1) whether
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`discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the
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`issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a
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`clear tactical disadvantage to the nonmoving party.” PersonalWeb Techs., LLC v. Apple Inc., 69 F.
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`Supp. 3d 1022, 1025 (N.D. Cal. 2014) (citing, among others, Telemac Corp. v. Teledigital, Inc.,
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`450 F.Supp.2d 1107, 1111 (N.D.Cal. 2006). There is no real dispute that these factors weigh in
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`favor of a stay with respect to the four patents subject to IPR.
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`The litigants part company, however, with respect to the fifth patent, U.S. Patent No.
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`5,907,823 (the ’823 patent) as to which no IPR has been initiated. Defendant argues that unless
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`the stay is extended to include it, there will be unnecessary duplication of efforts and expense,
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`such that the advantages of a stay would be severely diminished, and prejudice would increase.
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`Case 3:15-cv-05007-RS Document 205 Filed 06/15/16 Page 2 of 2
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`Plaintiff, in turn, argues that as to the ’823 patent itself, proceedings in the PTO cannot and will
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`not simplify or inform the issues to be litigated, and that not going forward on what it contends are
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`largely segregable matters will lead to unwarranted and potentially prejudicial delay.
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`Both sides have presented their arguments in generalized terms, without many specific
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`examples of the efficiencies or inefficiencies they respectively contend would flow from either a
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`complete or partial stay. Plaintiff has pointed to the fact that the nature of the technology in the
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`’823 patent is arguably quite different from that in the other patents, and that there is no overlap in
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`inventors. Such distinctions may mean that certain aspects of litigating the ’823 patent might not
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`be intertwined with issues related to the other patents. Nevertheless, because there is substantial
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`or complete overlap in the products accused of infringing all of the patents, it seems inevitable
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`there would be other aspects of discovery—and ultimately trial—that would be duplicated if the
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`patents were litigated separately.
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`While by no means conceding that a complete stay is appropriate, plaintiff requests that
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`such a stay be ordered in lieu of its motion being denied outright. Although the question is close,
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`under all the circumstances the disadvantages and potential burdens of a partial stay outweigh the
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`balance that otherwise would easily warrant granting a stay with respect to the four patents subject
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`to IPR. Additionally, the burden to plaintiff of the stay being extended to the ’823 patent—even
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`though a stay would not be warranted as to it independently—is minimal. In light of these
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`conclusions and of plaintiff’s request that its motion not simply be denied, this action will be
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`stayed in its entirety pending the IPR proceedings. The parties shall file a joint status report every
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`120 days.
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`IT IS SO ORDERED.
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`Dated: June 15, 2016
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`______________________________________
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`RICHARD SEEBORG
`United States District Judge
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`CASE NO. 15-cv-05007-RS
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