Case 3:16-cv-02787-WHO Document 267 Filed 03/26/18 Page 1 of 3
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`HUAWEI TECHNOLOGIES, CO, LTD, et
`al.,
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`Plaintiffs,
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`v.
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`SAMSUNG ELECTRONICS CO, LTD., et
`al.,
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`Defendants.
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`Case No. 3:16-cv-02787-WHO
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`ORDER GRANTING STAY OF
`INFRINGEMENT CLAIM FOR '588
`PATENT PENDING INTER PARTES
`REVIEW
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`Re: Dkt. No. 260, 261
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`Plaintiffs Huawei Technologies Co., Ltd., Huawei Device USA, Inc., Huawei
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`Technologies USA, Inc., and HiSilicon Technologies Co. Ltd. (collectively “Huawei”) filed a
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`motion to stay infringement claims of U.S. Patent No. 8,457,588 (“the ’588 patent”) on the
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`grounds that all asserted claims of the ’588 patent are under inter partes review before the Patent
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`Trial and Appeal Board (“PTAB”). Mot. to Stay (“Mot.”)(Dkt. No. 260).1 Defendants Samsung
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`Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Research America, Inc.
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`(collectively, “Samsung”) allege infringement of the ’588 patent in its counterclaims (Am.
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`Counterclaims ¶¶ 113–138, Dkt. No. 91), and selected claims 6, 7, 8, and 9 of the ’588 patent
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`(Samsung’s Case Narrowing St., Dkt. No. 256) as part of the case narrowing required by the
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`court’s scheduling orders (Order Regarding Case Management Proposals, Dkt. No. 143; Am. Civil
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`Minute Order, Dkt. No. 207; Civil Pretrial Order, Dkt. No. 208).
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`On August 22, 2017, Huawei filed a timely petition for inter partes review before PTAB,
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`challenging all of the claims of the ’588 patent. On March 15, 2018, the PTAB determined that
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`Huawei “has shown a reasonable likelihood that it would prevail in establishing the
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`1 Huawei’s Motion to Shorten Time is DENIED AS MOOT. Dkt. No. 261.
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`Case 3:16-cv-02787-WHO Document 267 Filed 03/26/18 Page 2 of 3
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`unpatentability of claims 1–4, 6–10, and 12 of the ’588 patent.” Decision, Institution of Inter
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`Partes Review at 2 (citing 35 U.S.C. § 314(a))(Mot., Ex. A, Dkt. No. 260-1).2 Notwithstanding
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`this decision, the next day Samsung included the ’588 patent claims in its case narrowing
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`statement.
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`“Courts in this District examine three factors when determining whether to stay a patent
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`infringement case pending review or reexamination of the patents: ‘(1) whether discovery is
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`complete and whether a trial date has been set; (2) whether a stay will simplify the issues in
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`question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear
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`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)(“PersonalWeb II”). Courts decide stay requests on a case-
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`by-case basis. Id.
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`Each factor supports staying the ’588 patent infringement claims.
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`First, the case is in the midst of discovery and trial is more than eight months away.3
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`While the parties have completed fact discovery, “a substantial portion of the work—expert
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`discovery, summary judgment, pre-trial preparation, and trial itself—lies ahead.” PersonalWeb
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`Techs., LLC v. Facebook, Inc., No. 5:13-CV-01356-EJD, 2014 WL 116340, at *3 (N.D. Cal. Jan.
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`13, 2014)(“PersonalWeb I”). The PersonalWeb I court found that “this case is not so far advanced
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`that a stay would be improper.” Id. at *4. Numerous courts have likewise granted stays at similar
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`stages in the proceedings. See, e.g., Williamson v. Google Inc., No. 15-CV-00966-BLF, 2015 WL
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`10890658, at *2 (N.D. Cal. Oct. 8, 2015)(finding this factor weighed in favor of stay where “the
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`parties have engaged in some discovery, [but] discovery is far from complete.”); PersonalWeb II,
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`69 F. Supp. 3d at 1027 (finding this factor weighed in favor of stay where “already the parties
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`have undertaken significant work, but the Court has not set a trial date and several costly stages of
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`discovery remain.”).
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`2 It declined to initiate review of claims 5 and 11 of the ’588 patent.
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` Fact discovery is closed, but expert discovery has just begun. Opening expert reports are due on
`April 13, 2018, rebuttal expert reports are due on May 11, 2018, expert depositions must be
`completed by June 8, 2018, and dispositive motions must be filed by July 5, 2018. Civil Pretrial
`Order at 1 (Dkt. No. 208).
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`Case 3:16-cv-02787-WHO Document 267 Filed 03/26/18 Page 3 of 3
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`Second, staying the ’588 patent infringement claims will simplify the case, especially
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`considering PTAB has initiated review on all of the asserted claims of the ’588 patent. “A stay
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`pending reexamination is justified where ‘the outcome of the reexamination would be likely to
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`assist the court in determining patent validity and, if the claims were canceled in the
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`reexamination, would eliminate the need to try the infringement issue.’” Evolutionary
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`Intelligence, LLC v. Apple, Inc., No. C 13-04201 WHA, 2014 WL 93954, at *2 (N.D. Cal. Jan. 9,
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`2014)(quoting Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1341 (Fed. Cir. 1998)). The
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`parties and the court will save time and money going through expert discovery and dispositive
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`motion practice with patent claims that PTAB has already determined are likely invalid. Courts
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`routinely stay claims when the PTAB has instituted inter partes review. See, e.g., Evolutionary,
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`2014 WL 93954, at *3 (N.D. Cal. Jan. 9, 2014)(finding that “[t]his action may benefit from the
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`PTAB’s decision” and “[t]here is also little benefit to be gained from having two forums review
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`the validity of the same claims at the same time.”).
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`Finally, there is no undue prejudice to Samsung in light of ongoing process to narrow and
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`focus the claims in this matter. I have appointed Chief Magistrate Judge Joseph C. Spero to work
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`with the parties in this regard and leave to him to determine whether any adjustments should be
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`made in light this Order.
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`Huawei’s motion to stay the ’588 infringement claims pending IPR is GRANTED.
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`IT IS SO ORDERED.
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`Dated: March 26, 2018
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`William H. Orrick
`United States District Judge
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