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`Case 2:18-cv-01732-RSM Document 76 Filed 12/18/20 Page 1 of 4
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`Plaintiff,
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`v.
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`UNILOC 2017 LLC,
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`HTC AMERICA, INC.,
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`Defendant.
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`CASE NO. C18-1732 RSM
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`ORDER
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`
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`I.
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`INTRODUCTION
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`This matter is before the Court on the parties’ LCR 37 Submission Regarding HTC’s
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`Motion to Stay Pending Inter Partes Review. Dkt. #74. As noted in the captioning, the parties
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`have agreed to utilize the Court’s expedited joint motion procedure. See W.D. WASH. LOCAL
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`RULES LCR 37(a)(2)(I) (permitting parties to agree “to use the expedited joint motion procedure
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`for” motions unrelated to discovery disputes). Defendant HTC America, Inc. (“HTC”) requests
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`that the Court stay this matter for several months to allow for resolution of a related inter partes
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`review (“IPR”) before the Patent Trial and Appeals Board (“PTAB”). Plaintiff Uniloc 2017 LLC
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`(“Uniloc”) opposes the request and argues that a stay should have been requested earlier and is
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`not appropriate at this time. Having reviewed the matter, the Court agrees with HTC and stays
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`the matter.
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`ORDER – 1
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`

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`Case 2:18-cv-01732-RSM Document 76 Filed 12/18/20 Page 2 of 4
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`II.
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`BACKGROUND
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`Uniloc initiated this action alleging that HTC had infringed on claims 1, 3–5, and 7 of
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`Uniloc’s U.S. Patent No. 6,836,654 (“the ‘654 Patent”). Dkt. #1 at ¶¶ 5–20. Trial is currently
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`scheduled for June 21, 2021, fact discovery is to be completed by January 13, 2021, and expert
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`discovery is to be completed by March 5, 2021. Dkt. #69. The Court has already held a Markman
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`hearing and issued an order constructing disputed terms. Dkt. #72.
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`
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`HTC now seeks a stay on the basis of an IPR initiated by Microsoft challenging the
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`validity of claims 10–20 of Uniloc’s ‘654 Patent before the PTAB. Microsoft first sought IPR
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`related to the ‘654 Patent on August 9, 2019. Dkt. #74 at 2. The PTAB accepted the petition
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`and instituted IPR on February 11, 2020, and oral argument occurred in November 2020. The
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`PTAB’s final written decision is due, by statute, by February 11, 2021. Id.
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`III.
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`DISCUSSION
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`A. Legal Standard
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`
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`The parties agree that the Court has authority to enter a stay and further agree on the
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`applicable legal standard:
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`Courts consider three factors when deciding whether to grant a stay pending IPR:
`“(1) whether a stay will simplify the issues in question and the trial of the case[s],
`(2) whether discovery is complete and whether . . . trial date[s] ha[ve] already
`been set, and (3) whether a stay will unduly prejudice or present a clear tactical
`disadvantage to the non-moving party.” [Nat’l Prods. Inc. v. Arkon Res., Inc.,
`Case No. 2:15-cv-01984-JLR, Dkt. #66 at *5 (W.D. Wash. Oct. 14, 2016)]
`(brackets in original) (quoting Pac. Bioscience Labs., Inc. v. Pretika Corp., 760
`F. Supp. 2d 1061, 1063 (W.D. Wash. 2011)); see, e.g., Roche Molecular Sys., Inc.
`v. Cepheid, Case No. 3:14-cv-03228-EDL, 2015 WL 124523, at *3 (N.D. Cal.
`Jan. 7, 2015)
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`Dkt. #74 at 5; Id. at 8. “The moving party bears the burden of demonstrating that a stay is
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`appropriate.” SRC Labs, LLC v. Microsoft Corp., Case No. 18-cv-0321-JLR, 2018 WL 6065635,
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`at *2 (W.D. Wash. Nov. 20, 2018).
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`ORDER – 2
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`Case 2:18-cv-01732-RSM Document 76 Filed 12/18/20 Page 3 of 4
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`
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`B. A Brief Stay is Appropriate
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`Only the second factor, the stage of the proceedings, is in serious contention here. Uniloc
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`does not contest HTC’s argument that allowing the IPR to proceed is likely to simplify the issues
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`for trial in this case.1 Dkt. #74 at 6–7, 9. Likewise, Uniloc does not argue that it will suffer any
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`prejudice or tactical disadvantage by a short stay and HTC points out that narrowing the issues
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`is, in fact, likely to work to the advantage of the parties and the Court. Id. at 8–9. The Court
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`finds HTC’s arguments on both these points persuasive.
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`
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`Uniloc’s primary contention is that the request for a stay has come too late. Discovery,
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`it asserts, is almost complete and HTC could have sought a stay far earlier in these proceedings.
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`Id. at 10–11. Uniloc points to a number of dates where it believes a stay may have been
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`warranted. Id. These include the dates when Microsoft sought IPR, when the IPR was instituted,
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`and various dates associated with the Markman hearing in this matter—so as to avoid associated
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`expenses. Id. Uniloc’s arguments have some appeal and the Court agrees that HTC could have
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`sought a stay at an earlier date.2 But that does not mean that a stay is not appropriate at this time.
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`
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`This case has not just begun its journey, but the case also has not reached trial’s threshold.
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`Most importantly, the stay is not anticipated to be lengthy as PTAB is obligated to issue a decision
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`no later than February 11, 2021. Further, Uniloc’s argument that discovery is almost complete
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`is belied by the fact that it served its first set of interrogatories and deposition notices after HTC
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`1 HTC does not establish that the patent claims at issue in this case are directly implicated by the
`proceedings before the PTAB. Compare Dkt. #74 at 2 (indicating claims 10–20 of the ‘654
`Patent are before the PTAB) with Dkt. #1 at ¶¶ 5–20 (Complaint referencing claims 1, 3–5, and
`7 of the ‘654 Patent). However, the PTAB’s analysis is likely to touch on issues that are contested
`in this case and a finding that certain claims are unpatentable may have a more significant impact
`on this case.
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` HTC does not provide a reason, other than miscommunication between counsel, as to why this
`case was not stayed previously.
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` 2
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`ORDER – 3
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`Case 2:18-cv-01732-RSM Document 76 Filed 12/18/20 Page 4 of 4
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`
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`alerted Uniloc of its intent to seek a stay. Dkt. #74 at 14. And finally, the Court notes and finds
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`important that Uniloc does not point to any real prejudice or disadvantage flowing from a short
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`stay. Any disruption or slight disadvantage that may result is certainly outweighed by the strong
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`likelihood that the Court and the parties will benefit from the PTAB’s analysis of the IPR’s issues.
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`IV.
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`CONCLUSION
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`
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`Accordingly, and having considered the parties’ submissions, arguments, and the
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`remainder of the record, the Court finds that HTC has carried its burden and ORDERS that the
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`parties’ LCR 37 Submission Regarding HTC’s Motion to Stay Pending Inter Partes Review
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`(Dkt. #74) is GRANTED. This matter is STAYED pending the Patent Trial and Appeal Board’s
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`final written decision in the inter partes review of U.S. Patent No. 6,836,654.
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`Dated this 18th day of December, 2020.
`
`A
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`RICARDO S. MARTINEZ
`CHIEF UNITED STATES DISTRICT JUDGE
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`ORDER – 4
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