Case 1:15-cv-02725-LGS Document 89 Filed 01/12/16 Page 1 of 3
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`IMPULSE RADIO LLC,
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`-against-
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`IBIQUITY DIGITAL CORP. et al.,
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` Plaintiff,
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`15 Civ. 2725 (LGS)
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`ORDER
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`Defendants.
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`LORNA G. SCHOFIELD, District Judge:
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`WHEREAS, on September 2, 2015, Defendants iBiquity Digital Corporation (“iBiquity”)
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`and iHeartMedia, Inc. (“iHeart”) moved to dismiss the Amended Complaint pursuant to Federal
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`Rule of Civil Procedure 12(b)(1), (6).
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`WHEREAS, on October 7, 2015, a conference was held.
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`WHEREAS, by order dated October 8, 2015, a schedule was set for Defendants to file
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`petitions for Covered Business Method Review (“CBMR”) and for iBiquity to file a motion to
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`stay proceedings.
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`WHEREAS, on November 6, 2015, Defendants filed petitions for CBMR of U.S. Patent
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`No. 7,908,172 (the “’172 patent”).
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`WHEREAS, on November 6, 2015, iBiquity filed a motion to stay proceedings pending
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`the Patent Trial and Appeal Board’s (“PTAB”) review of the ‘172 patent’s validity, which iHeart
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`joined. It is hereby
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`ORDERED that iBiquity’s motion for a stay is GRANTED.
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`Section 18(b) of the Leahy-Smith America Invents Act (“AIA”) lists four factors for
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`deciding whether to enter a stay:
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`USDC SDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC #:
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`DATE FILED:
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`1/12/2016
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`Case 1:15-cv-02725-LGS Document 89 Filed 01/12/16 Page 2 of 3
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`(A) whether a stay, or the denial thereof, will simplify the issues in question and
`streamline the trial;
`(B) whether discovery is complete and whether a trial date has been set;
`(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party
`or present a clear tactical advantage for the moving party; and
`(D) whether a stay, or a denial thereof, will reduce the burden of litigation on the
`parties and on the court.
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`AIA § 18(b), Pub. L. No. 112-29, 125 Stat. 284, 331 (2011). Courts may grant motions to stay
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`even before the PTAB institutes review. See VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d
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`1307, 1316 (Fed. Cir. 2014) (“While a motion to stay could be granted even before the PTAB
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`rules on a post-grant review petition, no doubt the case for a stay is stronger after post-grant
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`review has been instituted.”).
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`Each of the factors weighs in favor of a stay. First, the PTAB’s determinations would
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`simplify issues and streamline trial, as this case concerns the validity of Impulse’s ‘172 patent. A
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`PTAB ruling on the validity of any of the ‘172 patent’s claims would also reduce the burden of
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`litigation on the parties and the Court. Second, iBiquity’s motion for a stay comes early in this
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`litigation. Defendants filed their CBMR petitions within one month of the case’s initial pretrial
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`conference, and no trial dates or deadlines governing discovery (other than initial disclosures) or
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`the filing of dispositive motions have been set. Finally, Plaintiff has not established that it would
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`be unduly prejudiced by a stay, or that Defendants filed their CBMR petitions for tactical reasons.
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`Defendants announced that they either intended to file or contemplated filing CBMR petitions
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`and accompanying motions for a stay in the parties’ September 30, 2015, joint status letter. The
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`timing of this motion -- before discovery and the commencement of claim construction activities
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`-- weighs against a finding that either side would be unduly prejudiced or receive a “clear tactical
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`advantage” by the issuance of a stay. It is further
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`ORDERED that the parties shall file a joint letter as to the status of the CBMR petitions
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`and/or the PTAB’s review by April 15, 2016, and every sixty days thereafter. It is further
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`Case 1:15-cv-02725-LGS Document 89 Filed 01/12/16 Page 3 of 3
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`ORDERED that the parties shall file a joint letter not to exceed five pages in length
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`within seven days of receiving the PTAB’s decision on whether it will institute review of the ‘172
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`patent. The parties’ letter shall append the decision and summarize its implications for case
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`management. It is further
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`ORDERED that Defendants’ motions to dismiss are DENIED without prejudice to
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`renewal.
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`The Clerk of Court is directed to close the motions at Docket Nos. 50, 53 and 72.
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`Dated: January 12, 2016
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`New York, New York
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