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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`JAWBONE INNOVATIONS, LLC,
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`Case No. 23-cv-00466-TLT
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`ORDER GRANTING MOTION TO
`STAY PENDING INTER PARTES
`REVIEW
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`Re: ECF No. 132
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`RELATED TO
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`Case No. 3:22-cv-06727-TLT
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`Before the Court is Defendant Google LLC’s (“Defendant”) motion to stay the entire
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`action pending inter partes review (“IPR”). See Mot. to Stay (“Mot.”), ECF No. 132. In its
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`discretion, the Court finds this motion suitable for determination without oral argument. Civ. L.R.
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`7-1(b). Accordingly, the hearing set for May 2, 2023, is VACATED.
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`Having carefully considered the parties’ briefs, the relevant legal authority, and for the
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`reasons below, the Court hereby GRANTS Defendant’s motion to stay.
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`I.
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`BACKGROUND
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`On September 23, 2021, Plaintiff sued Defendant in the Western District of Texas, alleging
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`infringement of eight of Plaintiff’s patents: U.S. Patent Nos. 8,019,091 (the “’091 Patent”);
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`7,246,058 (the “’058 Patent”); 8,280,072 (the “’072 Patent”); 8,321,213 (the “’213 Patent”);
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`8,326,611 (the “’611 Patent”); 10,779,080 (the “’080 Patent”); 11,122,357 (the “’357 Patent”);
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`and 8,467,543 (the “’543 Patent”). See Compl., ECF No. 1. On December 23, 2022, Plaintiff
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`filed an amended complaint alleging infringement of an additional patent: U.S. Patent No.
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`8,503,691 (the “’691 Patent”). See Am. Compl., ECF No. 23.
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`Northern District of California
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`United States District Court
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`IMPERATIVE Ex. 1033
`IPR Petititon - US 11,554,005
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`

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`Upon Defendant’s motion, the case was transferred to this Court on February 1, 2023.
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`ECF Nos. 105-107. Before the case was transferred, the Patent Trial and Appeal Board (“PTAB”)
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`instituted IPR on eight of the nine asserted patents. On March 13, 2023, Defendant filed this
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`motion seeking to stay this case pending final resolution of the IPR proceedings. ECF No. 132.
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`II.
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`LEGAL STANDARD
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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 [Patent and Trademark Office] reexamination.”
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`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (citation omitted). “While courts
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`are ‘under no obligation to stay proceedings pending parallel litigation in the PTAB, judicial
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`efficiency and the desire to avoid inconsistent results may, after a careful consideration of the
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`relevant factors, counsel in favor of a limited stay, even before the PTAB has acted on a petition
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`for IPR.’” Finjan, Inc. v. Symantec Corp., 139 F. Supp. 3d 1032, 1035 (N.D. Cal. 2015) (quoting
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`Delphix Corp. v. Actifio, Inc., No. 13-cv-04613-BLF, 2014 WL 6068407, at *2 (N.D. Cal. Nov.
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`13, 2014). The moving party bears the burden. Nken v. Holder, 556 U.S. 418, 433–34 (2009).
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` “Courts traditionally consider three main factors in determining whether to stay a case
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`pending the conclusion of IPR proceedings: ‘(1) whether discovery is complete and whether a trial
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`date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and
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`(3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-
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`moving party.’” Trusted Knight Corp. v. Int’l Bus. Machines Corp., No. 19-CV-01206-EMC,
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`2020 WL 5107611, at *1 (N.D. Cal. Aug. 31, 2020) (quotation omitted).
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`III. DISCUSSION
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`1.
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`Stage of the Litigation
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`This case is in the early stages of litigation, which weighs in favor of a stay. Discovery has
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`begun but is not completed, and no trial date has been set. Although a claim construction order
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`has been issued (ECF No. 88), courts routinely grant stays even when claim construction has
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`already occurred. See, e.g., PersonalWeb Techs., LLC v. Facebook, Inc., No. 13-CV-01356-EJD,
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`2014 WL 116340, at *3-4 (N.D. Cal. Jan. 13, 2014) (granting stay when claim construction had
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`occurred but fact discovery remained open); Contour IP Holding, LLC v. GoPro, Inc., No. 17-CV-
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`Northern District of California
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`United States District Court
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`IMPERATIVE Ex. 1033
`IPR Petititon - US 11,554,005
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`04738-WHO, 2018 WL 6574188, at *3 (N.D. Cal. Dec. 12, 2018) (granting stay when claim
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`construction was complete and “some substantial discovery” had occurred, but “several costlier
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`stages of pretrial preparation remain, not to mention the trial itself”); Trusted Knight Corp., 2020
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`WL 5107611, at *2 (granting stay where claim construction had already occurred). Accordingly,
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`the Court finds this factor weighs in favor of granting a stay.
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`2.
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`Simplification of the Issues
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`“A stay is favored under the second factor when the outcome of the reexamination would
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`be likely to 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.” Contour IP Holding, 2018
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`WL 6574188, at *3 (internal quotations omitted). Courts have also found a stay is appropriate in
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`one action “in view of the stay already imposed in [a] related action.” See Ruckus Wireless, Inc. v.
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`Netgear, Inc., No. C 09-5271 PJH, 2010 WL 1222151, at *4 (N.D. Cal. Mar. 25, 2010) (“A
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`stay…ameliorates the court’s concerns over the duplicative litigation that could result from
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`allowing the present action to go forward before the earlier filed but closely related litigation.”).
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`Here, the IPR proceedings will likely simplify the issues in this case. The PTAB instituted
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`IPR on eight of the nine asserted patents, and it may cancel certain claims, which would eliminate
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`the need to try the infringement issue. Thus, a stay may save the parties time and money by
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`avoiding “going through expert discovery and dispositive motion practice with patent claims that
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`PTAB has already determined are likely invalid.” Huawei Techs., Co., Ltd. v. Samsung Elecs.
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`Co., Ltd., No. 16-CV-02787-WHO, 2018 WL 1471715, at *2 (N.D. Cal. Mar. 26, 2018); see also
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`Int’l Test Sols., Inc. v. Mipox Int’l Corp., No. 16-cv-00791-RS, 2017 WL 1316549, at *2 (N.D.
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`Cal. Apr. 10, 2017) (Where discovery has not yet been completed and a trial date has not been set,
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`courts are more likely to issue stays to save the parties and the Court unnecessary expenditures.).
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`In addition, on March 21, 2023, the Court imposed a stay in the related action Jawbone
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`Innovations, LLC v. Amazon.com, Inc., No. 3:22-cv-06727-TLT (the “Amazon Action”). This
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`action and the Amazon Action involve substantially the same asserted patents. See id., ECF No.
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`105 at 2-3. Thus, “[a]llowing [this case] to proceed while the [the Amazon Action is] stayed
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`would also be needlessly inefficient.” Uniloc USA, Inc. v. Apple Inc., No. 18-cv-00361-PJH, 2018
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`3
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`Northern District of California
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`United States District Court
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`IMPERATIVE Ex. 1033
`IPR Petititon - US 11,554,005
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`WL 2387855, at *3 (N.D. Cal. May 25, 2018) (“Moving forward with a single case now creates a
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`real risk of highly inefficient discovery that could require the same individuals—including third
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`parties—to undergo multiple rounds of overlapping depositions and discovery requests.”).
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`Accordingly, this factor also weighs in favor of granting a stay.
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`3.
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`Undue Prejudice to Plaintiff
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`To determine prejudice, courts consider four subfactors: “(1) the timing of the petition for
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`review; (2) the timing of the request for the stay; (3) the status of review proceedings; and (4) the
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`relationship of the parties.” Uniloc USA Inc. v. LG Elecs. U.S.A. Inc., No. 18-CV-06737-JST,
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`2019 WL 1905161, at *5 (N.D. Cal. Apr. 29, 2019). First, Defendant here timely filed its IPR
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`petitions. See Finjan, Inc., 139 F. Supp. 3d at 1036 (declining to “condition a stay on [defendant]
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`seeking IPR earlier than the end of its statutory deadline, or to read a dilatory motive into the
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`timely exercise of its statutory rights”). Second, Defendant filed its motion less than six weeks
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`from when the case was transferred to this Court. ECF Nos. 106, 132. Thus, “[t]his is not a case
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`where reexamination is sought on the eve of trial or after protracted discovery.” Sorensen v. Dig.
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`Networks N. Am., Inc., No. C 07-05568 JSW, 2008 WL 152179, at *2 (N.D. Cal. Jan. 16, 2008).
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`Third, the status of the IPR proceedings does not prejudice Plaintiff. As the Court
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`previously noted in the Amazon Action, “Google’s IPRs have been instituted and written final
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`decisions are expected from September 2023 to January 2024.” Amazon Action, ECF No. 105.
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`Finally, the parties do not argue that they are direct competitors. Compare Mot. 14 and Pl.
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`[’s] Opp’n to Mot. (“Opp’n”) 6-7, ECF No. 133. Thus, a stay would not unduly prejudice the
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`business dealings between two direct competitors. See Zomm, LLC v. Apple Inc., 391 F. Supp. 3d
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`946, 958 (N.D. Cal. 2019). In addition, because Plaintiff does not argue that it is practicing entity,
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`see Opp’n 6-7, as a nonpracticing entity, it “cannot be prejudiced by a stay because monetary
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`damages provide adequate redress for infringement.” Contour IP Holding, 2018 WL 6574188, at
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`*6; see also Amazon Action, ECF No. 105 at 7 (“[Plaintiff] argues that it is developing products
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`that practice the asserted patents[.] [T]he Court is unaware of any authority, and [Plaintiff] does
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`not cite any, for the proposition that [Plaintiff]’s intention to compete should be given weigh.). In
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`sum, the Court finds Plaintiff is not likely to suffer undue prejudice.
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`Northern District of California
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`IMPERATIVE Ex. 1033
`IPR Petititon - US 11,554,005
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`IV.
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`CONCLUSION
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`For the above reasons, Defendant’s motion to stay is GRANTED, and this entire action is
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`stayed pending final resolution of Defendant’s IPR proceedings. Accordingly, all pending dates
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`and deadlines are VACATED. The parties shall file joint status reports every 120 days apprising
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`the Court of the status of Defendant’s IPR proceedings, with the first report due August 25, 2023.
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`The parties are further ORDERED to file a joint status report within fourteen days after
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`issuance of the PTAB’s final written decisions for Defendant’s IPRs and notify the Court at that
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`time whether the stay should be lifted.
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`This Order terminates docket number 132.
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`IT IS SO ORDERED.
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`Dated: April 27, 2023
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`TRINA L. THOMPSON
`United States District Judge
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`Northern District of California
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`United States District Court
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`IMPERATIVE Ex. 1033
`IPR Petititon - US 11,554,005
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