Case 5:16-cv-02491-EJD Document 69 Filed 04/04/18 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`BING XU PRECISION CO. LTD.,
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`Plaintiff,
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`v.
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`ACER INCORPORATED, et al.,
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`Defendants.
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`Case No. 5:16-cv-02491-EJD
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`ORDER DENYING MOTION TO LIFT
`STAY
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`Re: Dkt. No. 62
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`I. INTRODUCTION
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`Plaintiff Bing Xu Precision Co., Ltd. filed suit against Defendants, asserting patent
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`infringement. The parties stipulated to stay the action pending inter partes review (“IPR”) with
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`the U.S. Patent and Trademark Office (“PTO”). Dkt. 61. In January 2018, the Patent Trial and
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`Appeal Board (“PTAB”) instituted review on certain claims, but not as to claim 2 of each of the
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`three patents in suit. Plaintiff moves to lift the current stay and reopen this action as to claim 2 of
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`each of the three patents in suit. The Court finds it appropriate to take the motion under
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`submission for decision without oral argument pursuant to Civil Local Rule 7-1(b). For the
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`reasons set forth below, Plaintiff’s motion is denied.
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`II. BACKGROUND
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`In May of 2016, Plaintiff filed this suit against Defendants Acer Inc. and Acer America
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`Corp., asserting patent infringement of U.S. Patent No. 8,512,071, entitled "Electrical Connector
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`Assembly Having a Printed Circuit Board With Soldering Holes Interconnected to a Plurality of
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`Contacts" ("the '071 Patent"), No. 8,740,631, entitled "Electrical Connector Assembly" ("the '631
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`Patent"), and No. 8,758,044, entitled "Electrical Connector Assembly Having a Printed Circuit
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`Case No.: 5:16-cv-02491-EJD
`ORDER DENYING MOTION TO LIFT STAY
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`Board With Soldering Holes Interconnected to a Plurality of Terminals And a Flat Flexible Cable"
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`("the '044 Patent") (collectively "the patents in suit"). In May of 2017, Plaintiff served its
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`infringement contentions asserting claims 1-4 of the '071 and '044 Patents and claims 1-2 of the
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`'631 Patent. Later in May of 2017, Luxshare Precision Industry Co. ("Luxshare"), filed a petition
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`for IPR challenging the patentability of all twenty (20) claims of the '071 Patent, and another IPR
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`challenging the patentability of all twenty (20) claims of the '044 Patent. In June of 2017,
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`Luxshare filed a third IPR petition challenging the patentability of claims 1 and 2 of the '631
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`Patent. Also in June of 2017, Plaintiff filed an amended complaint to include Luxshare and
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`Luxshare-ICT, Inc.
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`On January 12, 2018, the PTAB instituted review only on claims 1, 3, 4, and 8 of the '071
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`and '044 Patents and claim 1 of the '631 Patent. The PTAB did not institute review on asserted
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`claim 2 of the three patents in suit.
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`III. STANDARDS
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`"Courts have inherent power to manage their dockets and stay proceedings, including the
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`authority to order a stay pending conclusion of a PTO reexamination." Ethicon, Inc. v. Quigg, 849
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`F.2d 1422, 1426–27 (Fed.Cir.1988) (citations omitted). In determining whether to stay
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`proceedings pending PTO review, courts consider three factors: (1) the stage of litigation (i.e.
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`whether discovery is complete and whether a trial date has been set); (2) whether a stay will
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`simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice
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`or present a clear disadvantage to the non-moving party. Evolutionary Intelligence, LLC v.
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`Facebook, Inc., No. 13-4202 SI, 2014 WL 261837, at *1 (N.D. Cal. Jan. 23, 2014).
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`A. Stage of Litigation
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`IV. DISCUSSION
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`Here, the case is in its early stages. The Luxshare defendants have not responded to the
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`complaint. Although some document production and written discovery has been exchanged,
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`discovery is not complete. No depositions have been taken. Expert discovery has not started.
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`Claim construction has not occurred. No trial date has been set. This first factor weighs in favor
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`Case No.: 5:16-cv-02491-EJD
`ORDER DENYING MOTION TO LIFT STAY
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`Northern District of California
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`United States District Court
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`Case 5:16-cv-02491-EJD Document 69 Filed 04/04/18 Page 3 of 4
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`of continuing the stay. See id.
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`B. Simplification of the Case
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`Plaintiff contends that maintaining the stay will not simplify the issues in this case because
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`Plaintiff is willing to litigate only non-instituted claim 2 of the three patents in suit and "to drop
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`the asserted claims that remain in the IPRs." Plaintiff’s Motion, p.3. Plaintiff contends that the
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`PTAB has already decided that claim 2 of each of the patents in suit is not invalid and the PTAB
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`proceedings will have no effect on these claims.
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`Plaintiff’s argument is unpersuasive. As a preliminary matter, Plaintiff’s offer "to drop"
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`the instituted claims is illusory. Plaintiff has not agreed to dismiss the instituted claims from the
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`case with prejudice. Therefore, Plaintiff could always reassert the claims against Defendants later.
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`Further, even if Plaintiff dropped the instituted claims, the IPR proceedings could still simplify the
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`case. Claim 2 of each of the patents in suit is a dependent claim, based on claim 1 in each of the
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`patents in suit. Claim 1 of each of the patents in suit is under IPR review. If, for example, claim 1
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`of each of the patents in suit is found invalid, then the question of the validity of claim 2 is likely
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`to be simplified. A stay is also justified to avoid the possibility of inconsistent results, such as if
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`the PTO upholds claim 1 and the court invalidates claim 2 of the patents in suit. See Microsoft
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`Corp. v. Tivo Inc., No. 10-240 LHK, 2011 WL 1748428, at *5 (N.D. Cal. May 6, 2011) (holding
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`that because it is possible for the court and the PTO to reach inconsistent conclusions regarding
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`the same patent, there is a significant concern of wasting resources by proceeding forward). The
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`second factor weighs in favor of maintaining the stay.
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`C. Undue Prejudice to Plaintiff
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`The last factor is whether a stay would unduly prejudice or present a clear tactical
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`disadvantage to the party resisting the stay, namely Plaintiff in this case. See PersonalWeb
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`Technologies, LLC v. Apple Inc., 69 F.Supp.3d 1022, 1029 (N.D. Cal. 2014). Plaintiff makes no
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`showing of undue prejudice, and instead contends that it has a right to enforce non-instituted claim
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`2 of the three patents in suit. Delay alone does not amount to undue prejudice. Id. The third
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`factor weighs in favor of continuing the stay.
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`ORDER DENYING MOTION TO LIFT STAY
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`Case 5:16-cv-02491-EJD Document 69 Filed 04/04/18 Page 4 of 4
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`For the reasons set forth above, Plaintiff’s motion to lift the stay is DENIED.
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`V. CONCLUSION
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`IT IS SO ORDERED.
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`Dated: April 4, 2018
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`______________________________________
`EDWARD J. DAVILA
`United States District Judge
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`Case No.: 5:16-cv-02491-EJD
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