Case 8:19-cv-01805-DOC-JDE Document 194 Filed 08/27/20 Page 1 of 4 Page ID #:7342
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES – GENERAL
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`Date: August 27, 2020
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`Case No. SA CV 19-01805-DOC-JDE
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`Title: PINN, INC. v. APPLE, INC.
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`PRESENT:
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`THE HONORABLE DAVID O. CARTER, JUDGE
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`Kelly Davis
`Courtroom Clerk
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` Not Present
`Court Reporter
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`ATTORNEYS PRESENT FOR
`PLAINTIFF:
`None Present
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`ATTORNEYS PRESENT FOR
`DEFENDANT:
`None Present
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`PROCEEDINGS (IN CHAMBERS): ORDER DENYING DEFENDANT’S
`MOTION TO STAY PENDING POST
`GRANT REVIEW PROCEEDINGS
`[145]
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`Before the Court is Defendant Apple, Inc.’s (“Defendant”) Motion to Stay
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`Pending Post Grant Review Proceedings (“Motion”) (Dkt. 145). The Court finds this
`matter appropriate for resolution without oral argument. See Fed. R. Civ. P. 78; C.D. Cal.
`R. 7-15. Having reviewed the parties’ moving papers, the Court DENIES Defendant’s
`Motion.
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`Background
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`I.
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`This case arises out of a dispute over three asserted patents between Plaintiff Pinn,
`Inc. (“Plaintiff”) and Defendant. Defendant filed for inter partes review of two of the
`asserted patents on June 11, 2020, and filed the instant Motion with this Court on June
`12, 2020, asking the Court to stay the action pending inter partes review.
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`1
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`PINN-2002
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`Case 8:19-cv-01805-DOC-JDE Document 194 Filed 08/27/20 Page 2 of 4 Page ID #:7343
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES – GENERAL
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`Case No. SA CV 19-01805-DOC-JDE
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`II.
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`Legal Standard
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`Date: August 27, 2020
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` Page 2
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`“Courts have inherent power to manage their dockets and stay proceedings,
`including the authority to order a stay pending conclusion of a PTO reexamination.”
`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (citations omitted). “To
`be sure, a court is under no obligation to delay its own proceedings by yielding to
`ongoing PTAB patent reexaminations—even if the reexaminations are relevant to the
`infringement claims before the Court.” Robert Bosch Healthcare Sys., Inc. v. Cardiocom,
`LLC, No. C-14-1575 EMC, 2014 WL 3107447, at *3 (N.D. Cal. July 3, 2014); see also
`Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1328 (Fed. Cir. 2001).
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`To determine whether to stay a case pending reexamination or inter partes review,
`courts in this district typically consider three factors: “(1) whether discovery is complete
`and whether a trial date has been set; (2) whether a stay will simplify the issues in
`question and trial of the case; and (3) whether a stay would unduly prejudice or present a
`clear tactical disadvantage to the nonmoving party.” Universal Elecs., Inc. v. Universal
`Remote Control, Inc., 943 F. Supp. 2d 1028, 1030-31 (C.D. Cal. 2013). The three factors
`“are not exhaustive, however, as the decision whether to order a stay must be based on
`the totality of the circumstances.” Polaris Innovations Ltd. v. Kingston Tech. Co., Inc.,
`No. 8:16-cv-00300-CJC-RAO, 2016 WL 7496740, at *1 (C.D. Cal. Nov. 17, 2016)
`(citing Universal Elecs., Inc., 943 F. Supp. 2d at 1030-31).
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`III. Discussion
`In support of the instant Motion, Defendant argues that a stay is appropriate
`because discovery is in its early stages, reexamination will potentially limit or dispose of
`the issues in this action, and a stay will not unduly disadvantage Plaintiff. See generally
`Mot. Plaintiff disagrees on every element. See generally Opp’n.
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`First factor: discovery and trial date. According to Defendant, “the parties have
`taken no depositions and propounded no expert discovery, and the Court has not issued
`any claim construction orders.” Mot. at 5. Plaintiff responds that discovery closed in early
`August and that the case is rapidly progressing towards its January trial date. Opp’n at 1,
`7-8. Plaintiff also observes that Magistrate Judge Early has noted the advanced stage of
`this litigation. Id. at 8-9.
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`To analyze this factor, courts in the Central District of California often consider
`whether “there is more work ahead of the parties and the Court than behind the parties
`and the Court.” Limestone v. Micron Tech., Nos. SA CV 15-0278-DOC (RNBx) et al.,
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`2
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`PINN-2002
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`Case 8:19-cv-01805-DOC-JDE Document 194 Filed 08/27/20 Page 3 of 4 Page ID #:7344
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES – GENERAL
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`Case No. SA CV 19-01805-DOC-JDE
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`Date: August 27, 2020
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` Page 3
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`2016 WL 3598109, at *3 (C.D. Cal. Jan. 12, 2016) (quoting Semiconductor Energy Lab.
`Co., Ltd. v. Chimei Innolux Corp., No. SA CV 12-21-JST (JPRx), 2012 WL 7170593,
`at *2 (C.D. Cal. Dec. 19, 2012)). Here, given the number of hearings held by the Court,
`the fact that Technical Special Master Keyzer has presented the Court with a Report and
`Recommendation on Claim Construction (Dkt. 159), and the amount of discovery already
`conducted, the Court finds that this case is further along than would merit a stay. The
`Court therefore finds that this factor weighs against staying the case.
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`Second factor: simplification of issues. Here, Defendant has filed for inter partes
`review against two of the three patents at issue. The PTO has until December 2020 to
`decide whether to institute the inter partes review proceedings. This is long after the
`close of discovery in this case and the motion cutoff date of November 17, 2020.
`Additionally, trial in this matter is scheduled for January 26, 2021. While the outcome of
`inter partes review could partially simplify the issues for summary judgment and/or trial,
`inter partes review would also interfere with the timeline of this litigation and the Court’s
`calendar. The Court finds that the potential savings of judicial resources are outweighed
`by the need to delay the proceedings and find new dates in the Court’s busy calendar. As
`such, this factor weighs against staying the case.
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`Third factor: undue prejudice. Defendant argues that Plaintiff will not be injured
`because Plaintiff does not compete with Defendant and seeks only money damages.
`Plaintiff responds that a stay could potentially extend this litigation for years, given the
`additional time needed to exhaust appeals of the inter partes review.
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`Plaintiff correctly notes that, if this litigation is postponed for potentially years, it
`will become more difficult to prove its case, as “witnesses may become available, their
`memories may fade, and evidence may be lost.” Opp’n at 13. Given the resources the
`Court and the parties have already invested in this case, the Court finds that the increased
`difficulty of proving its case after the stay is lifted will be especially prejudicial to
`Plaintiff.
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`Considering the totality of the circumstances, and guided by the factors established
`in our case law, the Court finds that a stay pending inter partes review is not warranted.
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`IV. Disposition
`For the reasons set forth above, the Court DENIES Defendant’s Motion to Stay
`Pending Post Grant Review Proceedings.
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`3
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`PINN-2002
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`Case 8:19-cv-01805-DOC-JDE Document 194 Filed 08/27/20 Page 4 of 4 Page ID #:7345
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES – GENERAL
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`Case No. SA CV 19-01805-DOC-JDE
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`
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`Date: August 27, 2020
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` Page 4
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`The Clerk shall serve this minute order on the parties.
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`MINUTES FORM 11
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`Initials of Deputy Clerk: kd
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`CIVIL-GEN
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`4
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`PINN-2002
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