Case: 19-124 Document: 15 Page: 1 Filed: 08/01/2019
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`NOTE: This order is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: COREL SOFTWARE LLC,
`Petitioner
`______________________
`
`2019-124
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the District of Utah in No. 2:15-cv-00528-
`JNP-PMW, Judge Jill N. Parrish.
`______________________
`
`ON PETITION
`______________________
`
`Before LOURIE, BRYSON, and TARANTO, Circuit Judges.
`PER CURIAM.
`
`O R D E R
`Corel Software, LLC, petitions for a writ of mandamus
`
`directing the United States District Court for the District
`of Utah to vacate its order staying this patent infringement
`litigation. Microsoft Corporation opposes.
`
`In July 2015, Corel brought this action against Mi-
`crosoft alleging infringement of certain claims of U.S. Pa-
`tent Nos. 6,731,309 (“the ’309 patent”); 7,827,483 (“the ’483
`patent”); and 8,700,996 (“the ’996 patent”). In May 2016,
`Microsoft filed several petitions in the United States Pa-
`tent and Trademark Office (“PTO”) seeking inter partes
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`IN RE: COREL SOFTWARE LLC
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`review of the asserted claims of the ’483 and ’996 patents,
`and in June 2016, Microsoft filed a petition for inter partes
`review of the asserted claims of the ’309 patent. Microsoft
`asked the court to stay the district court litigation, and in
`August 2016, the court stayed the court proceedings pend-
`ing the resolution of Microsoft’s petitions for inter partes
`review.
`
`The PTO instituted inter partes review of the ’996 pa-
`tent, after which Corel cancelled all of the then-asserted
`claims of that patent. The PTO, however, declined to insti-
`tute inter partes review on the other two patents. With re-
`spect to the ’309 patent, the PTO declined to institute inter
`partes review after concluding that Microsoft had failed to
`show that a certain reference qualified as prior art. Subse-
`quently, Microsoft sought and obtained ex parte reexami-
`nation of the ’309 patent, and the examiner cancelled the
`only asserted independent claim of that patent based on
`additional evidence of the public availability of the prior art
`reference in question. The patentability of the other two
`asserted claims of the ’309 patent was confirmed.*
`
`After the completion of those post-grant review pro-
`ceedings, the district court in June 2018 lifted the stay of
`the district court litigation. In November 2018, the district
`court granted Corel’s motion to amend its infringement
`contentions to add two additional claims from the ’996 pa-
`tent that were not initially asserted in the litigation and
`were not challenged in the PTO’s post-grant review pro-
`ceedings. In February 2019, Microsoft sought ex parte
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`* Corel initially moved to lift the stay and to amend its
`infringement contentions in February 2017 after all of the
`inter partes review proceedings had been completed but be-
`fore institution of the ex parte reexamination of the ’309
`patent. In May 2017, the district court declined to lift the
`stay until after the PTO completed its review of the ’309
`patent.
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`IN RE: COREL SOFTWARE LLC
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`reexamination of those two newly asserted claims and
`moved the district court for a second stay of the litigation.
`In April 2019, the PTO initiated reexamination proceed-
`ings with regard to the newly asserted claims of the ’996
`patent.
`On May 14, 2019, a magistrate judge who was assigned
`to the case entered an order granting Microsoft’s motion to
`stay the litigation. The magistrate judge considered the
`traditional factors used to analyze stay motions. See Mu-
`rata Mach. USA v. Daifuku Co., 830 F.3d 1357, 1361 (Fed.
`Cir. 2016). First, the magistrate judge concluded that the
`reexamination proceeding “has at least the potential to
`simplify the issues in this case” and that not granting a
`stay could ultimately “require reconsideration of certain is-
`sues[] and result in piecemeal litigation.”
`Next, the magistrate judge considered the status of the
`litigation. He acknowledged that after the stay was lifted
`in June 2018 “the parties have moved this case forward to
`some degree.” He noted, however, that “substantial pro-
`ceedings” in the case had yet to be completed and that no
`trial date had yet been set. He therefore found that the
`posture of the case weighed in favor of a stay.
`Finally, the magistrate judge concluded that Corel had
`not shown that it would be unduly prejudiced by a stay, a
`conclusion that was supported by the fact that Corel had
`not sought injunctive relief in the case. The magistrate
`judge also rejected Corel’s assertion that Microsoft was at-
`tempting to gain a tactical advantage by seeking a stay; he
`noted that “Microsoft filed its reexamination request soon
`after receiving Corel’s amended final infringement conten-
`tions and before serving its final invalidity contentions,”
`and that “it does not appear that Microsoft had any reason
`to [challenge the two claims of the ’996 patent] until No-
`vember 2018, when the court granted Corel’s request for
`leave to amend its infringement contentions to assert those
`claims.”
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`IN RE: COREL SOFTWARE LLC
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`Corel filed an objection to the magistrate judge’s order.
`On June 3, 2019, the district court overruled Corel’s objec-
`tion, finding that the magistrate judge’s order was neither
`clearly erroneous nor contrary to law. On June 28, 2019,
`the PTO examiner issued a first office action rejecting the
`two claims of the ’996 patent that were in reexamination.
`A week later, Corel filed this petition for mandamus to
`compel the district court to lift the stay of the district court
`litigation.
`In seeking mandamus relief, Corel argues that the dis-
`trict court failed to “account[] for the prejudice imposed by
`the serial nature of Microsoft’s challenges and the resulting
`serial delays.” As a result, Corel argues, the district court
`effectively imposed “an indefinite stay of litigation, subject
`to the discretion of the accused infringer to file serial chal-
`lenges to the patents-in-suit in the USPTO.”
`
`A decision to stay litigation is committed to the sound
`discretion of the trial court. See Gould v. Control Laser
`Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983); see also Landis
`v. N. Am. Co., 299 U.S. 248, 254 (1936). “Importantly, on
`mandamus review our role is not to second-guess the trial
`court’s decision to stay[.]” In re Med. Components, Inc., 535
`F. App’x 916, 918 (Fed. Cir. 2013). Instead, we look only to
`see whether the decision amounted to a “clear abuse of dis-
`cretion.” Bankers Life & Cas. Co. v. Holland, 346 U.S. 379,
`383 (1953). Corel has not shown such an abuse here.
`
`The district court’s ruling cannot be characterized as
`amounting to “a failure to meaningfully consider” the tra-
`ditional stay factors. See In re Link_A_Media Devices
`Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011). Nor is this a
`situation in which Microsoft has “abuse[d] the reexamina-
`tion process.” See Harris Corp. v. Ruckus Wireless, Inc.,
`No. 11-cv-618, slip op. at 4 (M.D. Fla. Oct. 2, 2014). The
`first stay resulted in the cancellation of all of the pending
`claims of the ’996 patent and, subsequently, the sole as-
`serted independent claim of the ’309 patent. After the stay
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`was lifted, the district court permitted Corel to add two
`new claims from the ’996 patent, and Microsoft promptly
`sought reexamination of those claims and a further stay of
`the litigation. Although Corel contends that Microsoft
`should have challenged the two new claims when it an-
`nounced its intention to add them to the litigation, rather
`than waiting until the district court granted Corel’s motion
`to add those claims to the case, the magistrate judge found
`that Microsoft had no reason to challenge those claims un-
`til the court granted Corel’s request for leave to amend its
`infringement contentions in November 2018. The court’s
`conclusion in that regard was not unreasonable.
` Nor does Microsoft’s conduct, taken as a whole, amount
`to a request for an indefinite stay, as Corel contends. The
`initial stay pending the inter partes review proceedings was
`reasonable in light of the prospect of simplifying the dis-
`trict court litigation. The court also acted reasonably in
`denying Corel’s request to lift the stay during the period
`that the reexamination of the ’309 patent was pending.
`The district court lifted the initial stay in this case after the
`completion of the PTO’s proceedings regarding the three
`asserted patents, and reinstated the stay only after Corel
`sought to add the two new claims from the ’996 patent to
`the case. Corel presumably could have asserted those
`claims at the outset of the litigation, but did not. Moreover,
`the reinstated stay has been in place for only a few months.
`The PTO examiner conducting the reexamination stated
`that the examination would be expedited, and in fact the
`examiner has already entered an office action rejecting the
`two challenged claims. Under these circumstances, Corel’s
`contention that the district court’s stay order is an invita-
`tion for Microsoft to postpone the litigation indefinitely is
`not persuasive. The district court committed no clear
`abuse of discretion in granting the stay.
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`Accordingly,
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`IT IS ORDERED THAT:
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`IN RE: COREL SOFTWARE LLC
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`The petition is denied.
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` August 1, 2019
` Date
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`s32
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`FOR THE COURT
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`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
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