Case 3:21-cv-03649-EMC Document 59 Filed 03/30/22 Page 1 of 3
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`NETFLIX, INC.,
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`Plaintiff,
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`v.
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`CA, INC., et al.,
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`Defendants.
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`CA INC, et al.,
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`Plaintiffs,
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`v.
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`NETFLIX INC,
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`Defendant.
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`Case No. 21-cv-03649-EMC
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`ORDER GRANTING PLAINTIFF’S
`MOTION TO STAY PENDING INTER
`PARTES REVIEW
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`Docket No. 51
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`RELATED TO
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`Case No. 22-cv-00373-EMC
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`Currently pending before the Court is Netflix’s motion to stay proceedings in two related
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`cases. The higher-numbered case is the patent infringement case filed by CA/Avago; the lower-
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`numbered case the declaratory judgment case filed by Netflix. Although the patent infringement
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`case is the higher-numbered case, it was filed before the declaratory judgment case. In the
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`pending motion, Netflix asks the Court to stay proceedings in both cases pending inter partes
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`review (“IPR”). The PTAB has instituted IPR for four out of the five patents at issue. A decision
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`on those patents is expected by February 2023. For the fifth patent, Netflix filed for IPR in
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`January 2022 and a decision on whether IPR will be instituted is expected in approximately six
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`months.
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`Having considered the parties’ briefs and accompanying submissions, the Court hereby
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`finds the matter suitable for disposition without oral argument. The hearing on Netflix’s motion to
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`Case 3:21-cv-03649-EMC Document 59 Filed 03/30/22 Page 2 of 3
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`stay is VACATED, and the motion GRANTED.
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`There is no dispute that “[c]ourts traditionally consider three main factors in determining
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`whether to stay a case pending the conclusion of IPR proceedings: ‘(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 non-moving party.’” Trusted Knight Corp. v. Int'l Bus. Machines
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`Corp., No. 19-CV-01206-EMC, 2020 WL 5107611, at *1 (N.D. Cal. Aug. 31, 2020). On balance,
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`these factors weigh in favor of a stay in the instant case.
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`For example, on (1), the Court acknowledges that there has been a fair amount of
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`discovery conducted in this case and that, before the patent infringement case was transferred to
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`this Court in January 2022, trial had been set for April 2022 in Texas. However, the Court views
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`the trial date set by the Texas court as somewhat unusual – i.e., the patent infringement case was
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`only filed back in March 2021; thus, the Texas court put the case on a fast track for the trial to take
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`place by April 2022. Furthermore, as a practical matter, the patent infringement case is now
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`before this Court, and there is a significant amount of litigation that still remains, including more
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`discovery and claim construction (because Netflix has objected to the Texas magistrate judge’s
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`claim construction ruling). This Court has yet to set a new trial date.
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`On (2), a stay is likely to simplify matters in this case. IPR has been instituted for four out
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`of the five patents, and the remaining patent (for which Netflix has filed for IPR) appears to be
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`related to at least one of the other four patents. See Mot. at 5 (noting that CA/Avago “disclosed a
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`single technical expert to address both the ‘938 and ‘419 patents”). That some or even all claims
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`may survive IPR and/or that IPR will not address all invalidity issues does not negate efficiencies
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`from a stay. See Trusted Knight, 2020 WL 5107611, at *3 (noting that, “even if the IPR
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`proceedings do ;not result in any cancelled or modified claims, this [C]ourt will receive the benefit
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`of the PTO's expertise and guidance on these claims’[;] [i]n addition, the case will be simplified
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`because IBM would be barred from raising any arguments it raised or could have raised in the
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`PTO proceeding”).
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`Finally, on (3), i.e., the Court is not persuaded that a stay would unduly prejudice or
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`United States District Court
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`Case 3:21-cv-03649-EMC Document 59 Filed 03/30/22 Page 3 of 3
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`tactically disadvantage CA/Avago. See id. (stating that courts assess four subfactors here: “(1) the
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`timing of the petition for review; (2) the timing of the request for the stay; (3) the status of review
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`proceedings; and (4) the relationship of the parties”) (internal quotation marks omitted)). Netflix
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`filed for IPR within a few months after the patent infringement case was filed (and understandably
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`after CA/Avago had provided their infringement contentions). In addition, it was reasonable for
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`Netflix to wait until after IPR had been instituted (in February 2022) before moving this Court for
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`a stay (in March 2022). Staying the case pending the PTAB’s IPR decision for four out of the five
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`patents could result in a stay of proceedings through February 2023. However, given that the
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`patent case was initiated in March 2021, that delay is not unduly burdensome. Moreover,
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`“‘[c]ourts have repeatedly found no undue prejudice unless the patentee makes a specific showing
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`of prejudice beyond the delay necessarily inherent in any stay,’ and thus, the ‘delay inherent in the
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`reexamination process does not constitute, by itself, undue prejudice.’” Id. at *5. Finally,
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`CA/Avago admit that they are not competitors with Netflix, and they do not dispute Netflix’s
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`assertion that they “have abandoned any claim for injunctive relief or lost profits” and that “they
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`have no practicing products.” Mot. at 16.
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`For the foregoing reasons, the Court grants Netflix’s motion to stay. As a placeholder, the
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`Court sets a status conference for February 7, 2023. If the PTAB issues its IPR decision on the
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`four patents earlier than this date, then the parties may move the Court to advance the status
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`conference date. The parties shall file a joint status conference statement within one week prior to
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`the conference.
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`This order disposes of Docket No. 51 in No. C-21-3649 EMC.
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`IT IS SO ORDERED.
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`Dated: March 30, 2022
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`______________________________________
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`EDWARD M. CHEN
`United States District Judge
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`Northern District of California
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`United States District Court
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