Case 3:21-cv-00812-TWR-JLB Document 76 Filed 01/26/22 PageID.3036 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No.: 21-CV-812 TWR (JLB)
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`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANT’S
`MOTION TO STAY
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`(ECF No. 53)
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`Defendant.
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`TACTION TECHNOLOGY, INC.,
`Plaintiff,
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`v.
`APPLE INC.,
`
`
`Presently before the Court is the Motion to Stay (“Mot.,” ECF No. 53) filed by
` 
`Defendant Apple Inc. (“Apple”). Plaintiff Taction Technology, Inc. (“Taction”) has filed
`an Opposition (“Opp’n,” ECF No. 62), to which Defendant has filed a Reply (“Reply,”
`ECF No. 65). The Court held oral argument on the Motion on January 19, 2022. (See ECF
`No. 69; see also ECF No. 74 (“Tr.”).) Having carefully reviewed the Parties’ arguments,
`the record, and the law, the Court GRANTS IN PART AND DENIES IN PART
`Defendant’s Motion to Stay as follows.
`BACKGROUND
`On April 26, 2021, Plaintiff Taction filed its Complaint against Defendant Apple
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`asserting claims for patent infringement. (See ECF No. 1 (“Compl.”)). Taction is a
`“technology innovator specializing in enhanced haptics for electronic devices.” (Id. ¶ 1.)
`Taction owns all rights, title, and interest in U.S. Patent Nos. 10,659,885 and 10,820,117
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`Case 3:21-cv-00812-TWR-JLB Document 76 Filed 01/26/22 PageID.3037 Page 2 of 6
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`(together, the “Asserted Patents”). (Id. ¶ 23.) Taction alleges that Apple has “directly
`infringed, continues to infringe, and has induced or contributed to the infringement” of the
`Asserted Patents “by making, using, selling, and offering for sale, without authority or
`license the Accused Products in violation of 35 U.S.C. § 271(a).” (Compl. ¶¶ 93, 133.)
`On October 21, 2021, Apple filed petitions for inter partes review (“IPR”) before
`the Patent Trial and Appeal Board (“PTAB”). (Mot. at 1.) The IPR petitions “seek to
`invalidate all asserted claims of the patents at issue.” (Id.) “The PTAB must decide
`whether to institute the IPRs within 6 months after they are filed, and if instituted, must
`make a final decision on the IPRs within 1 year after institution.” (Id.) Thus, the PTAB’s
`decision of whether to institute the IPR will be due in April 2022. (Id. at 2.) Apple requests
`that the Court stay this case pending the outcome of the proceedings in the United States
`Patent and Trademark Office (“PTO”), in which Apple filed its IPR petitions before the
`PTAB. (Id. at 1.)
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`LEGAL STANDARD
`A district court has broad discretion to control its own docket—including the
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`discretion to stay proceedings. See Clinton v. Jones, 520 U.S. 681, 706 (1997). Courts
`generally consider three factors to determine whether to impose a stay pending parallel
`proceedings before the PTAB: (1) whether a stay will simplify the issues in question and
`trial of the case, (2) whether discovery is complete and a trial date set, and (3) whether a
`stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving
`party. See Qualcomm Inc. v. Apple Inc., No. 3:17-CV-2403-CAB-MDD, 2018 WL
`4104966, at *1 (S.D. Cal. Aug. 29, 2018) (citing TAS Energy, Inc. v. San Diego Gas &
`Elec. Co., No. 12-cv-2777-GPC-BGS, 2014 WL 794215, at *3 (S.D. Cal. Feb. 26, 2014)).
`“There is no per se rule that patent cases should be stayed pending reexamination, because
`such a rule ‘would invite parties to unilaterally derail’ litigation.” Presidio Components,
`Inc. v. Am. Tech. Ceramics Corp., No. 14-CV-2061-H (BGS), 2015 WL 12843213, at *2
`(S.D. Cal. Apr. 20, 2015) (quoting Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2014
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`Case 3:21-cv-00812-TWR-JLB Document 76 Filed 01/26/22 PageID.3038 Page 3 of 6
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`U.S. Dist. LEXIS 4025, at *4 (N.D. Cal. Jan. 13, 2014)). Rather, the review includes the
`totality of the circumstances. See Qualcomm Inc., 2018 WL 4104966, at *1.
`ANALYSIS
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`I.
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`Simplification of Issues
`First, the Court considers whether a stay will help simplify the issues in question and
`the trial proceedings. See TAS Energy, 2014 WL 794215, at *3. The IPR can help
`streamline a case because “when a claim is cancelled, the patentee loses any cause of action
`based on that claim, and any pending litigation in which the claims are asserted becomes
`moot.” See Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013).
`“Even if no patent claim is eliminated, the intrinsic record developed during the IPR may
`inform on issues like claim construction.” Core Optical Techs., LLC v. Fujitsu Network
`Commc’ns, Inc., No. SACV1600437AGJPRX, 2016 WL 7507760, at *2 (C.D. Cal.
`Sept. 12, 2016).
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`Apple has petitioned for review of both Asserted Patents at issue in this case and
`filed four IPR petitions. (Mot. at 2.) Taction argues that it is speculative for the Court to
`stay the case prior to the PTAB’s decision whether to institute the IPR. (Opp’n at 6.) If
`the PTAB decides to institute the IPR, however, there are only two outcomes—either the
`PTAB cancels the claim, or it does not. If it invalidates the claim, the action is rendered
`moot. If it confirms the claim, Apple would be “estopped from asserting invalidity
`challenges in this case that it raised or could reasonably have raised in the IPR.” See
`Qualcomm Inc., 2018 WL 4104966, at *2. This binary outcome weighs in favor of a
`“limited stay of proceedings until the PTAB issues its decisions on whether to institute
`IPR.” See Qualcomm Inc., 2018 WL 4104966, at *2. Given that the PTAB will decide
`whether to institute the IPR within three months, the potential to save the parties and the
`Court from expending resources during the waiting period weighs in favor of a temporary
`stay. See Clinicomp Int’l, Inc. v. Cerner Corp., No. 17CV2479-GPC(BLM), 2018 WL
`5617694, at *7 (S.D. Cal. Oct. 30, 2018) (finding a short stay appropriate because of the
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`Case 3:21-cv-00812-TWR-JLB Document 76 Filed 01/26/22 PageID.3039 Page 4 of 6
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`potential simplification of issues if the PTAB instituted IPR proceedings where a decision
`by the PTAB was expected in roughly four months).
`II.
`Stage of Litigation
`Second, the Court considers the stage of litigation—how close discovery is to
`completion and whether a trial date has been set. See Blast Motion, Inc. v. Zepp Labs, Inc.,
`No. 15-CV-700 JLS (NLS), 2016 WL 5107678, at *2 (S.D. Cal. Mar. 29, 2016). “If a
`significant amount of discovery remains, a stay is more appropriate.” Id.
`Thus far, Taction has produced “roughly 20,000 pages of documents and
`propounded 12 interrogatories and 85 RFPs.” (Opp’n at 3.) Apple has “produced over
`400,000 pages of documents and propounded 13 interrogatories and 79 requests for
`production.” (Id.) The parties have additionally met and conferred over discovery disputes
`and have fully briefed discovery motions. (Id.) But the “concern is not so much how much
`discovery has already occurred as whether discovery is nearing completion.” Blast Motion,
`2016 WL 5107678, at *2 (citing Sorensen ex rel. Sorensen Research & Dev. Trust v. Black
`& Decker Corp., No. 06cv1572 BTM (CAB), 2007 WL 2696590, at *4 (S.D. Cal. Sept. 10,
`2007)). To date, no depositions have been noticed; fact discovery is not scheduled to close
`until July 29, 2022; and expert discovery and dispositive motions will not occur until fall
`of 2022. (Mot. at 5.) In other words, discovery is not nearing completion, and there is still
`an abundance of work ahead of the parties to complete the discovery process, which weighs
`in favor of a brief stay. See Qualcomm Inc., 2018 WL 4104966, at *2–3 (granting a stay
`when “significant fact and expert discovery and dispositive motion practice” was ahead);
`Blast Motion, 2016 WL 5107678, at *2–3 (same).
`Further, although the parties have “exchanged preliminary and responsive claim
`constructions and have filed a Joint Hearing Statement, Joint Claim Construction Chart,
`and Joint Claim Construction Worksheet,” (Opp’n at 3), and Claim Construction Briefs,
`(see ECF Nos. 72, 73), no trial date has been set, and the claim construction hearing is set
`for February 18, 2022. (Opp’n at 3.) The early stage of this litigation therefore weighs in
`favor of a stay. See Qualcomm Inc., 2018 WL 4104966, at *2–3 (granting a stay when the
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`claim construction hearing had not yet taken place and no trial date had been set); see also
`Blast Motion, 2016 WL 5107678, at *2–3 (same).
`III. Undue Prejudice
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`Finally, the Court considers “whether a stay would unduly prejudice or present a
`clear tactical disadvantage to the nonmoving party.” Qualcomm Inc., 2018 WL 4104966,
`at *1. “Mere delay in litigation does not establish undue prejudice.” Core Optical Techs.,
`LLC v. Fujitsu Network Commc’ns, Inc., No. SACV1600437AGJPRX, 2016 WL 7507760,
`at *2 (C.D. Cal. Sept. 12, 2016). Further, “[t]he fact that the parties are not competitors
`weigh[s] in favor of a stay as any harm from a stay can be addressed through damages.”
`TAS Energy, 2014 WL 794215, at *5.
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`Apple asserts that Taction is not a direct competitor, (Mot. at 9)—an assertion that
`Taction does not contest. Taction argues that “staying the case would frustrate [its] ability
`to timely obtain discovery from Apple’s key fact witnesses who may be inaccessible,
`unavailable, or have faded memories if and when the stay is lifted.” (Opp’n at 14.) The
`PTAB’s decision whether to institute the IPR, however, is expected in April 2022. Thus,
`a temporary stay is not likely to cause undue prejudice to Taction or affect the availability
`of witnesses. Additionally, at oral argument on January 19, 2022, Taction expressed
`concern that a stay would provide Apple with two opportunities to construe the claims—
`first as the “plain meaning” by the PTAB and second under narrower terms by the Court.
`(See Tr. at 8:23–12:4.) While this issue may arise under a stay pending all PTAB
`proceedings, the Court is not persuaded that a temporary stay pending the PTAB’s decision
`whether to institute the IPR would similarly provide Apple this tactical advantage and
`unduly prejudice Taction.
`Further, neither Party has employed dilatory tactics or strategery in the timing of
`their motions. “Taction initiated this action within months after determining that Apple
`was using its technology without permission.” (Opp’n at 14.) Apple has been similarly
`expedient, as acknowledged by Taction at the hearing, (see Tr. at 11:5–7), filing its four
`IPR petitions six months before the statutory one-year deadline and four months after filing
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`Case 3:21-cv-00812-TWR-JLB Document 76 Filed 01/26/22 PageID.3041 Page 6 of 6
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`its Answer. (Mot. at 8.) Thus, it does not appear that Apple delayed intending to prejudice
`Taction, meaning this factor weighs in favor of granting a temporary stay.
`CONCLUSION
`In light of the foregoing, the Court GRANTS IN PART AND DENIES IN
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`PART Defendant’s Motion to Stay (ECF No. 53). Specifically, the Court STAYS this
`action pending the PTAB’s decision whether to institute the IPR but DENIES WITHOUT
`PREJUDICE Apple’s request to stay these proceedings pending the PTAB’s final
`decision on Apple’s IPR petitions. The Parties SHALL FILE a joint status report within
`seven (7) days of the PTAB issuing its decision whether to institute IPR.
`Additionally, the Court GRANTS the request to stay the Claim Construction hearing
`currently set for February 18, 2022. The Court therefore STAYS the Parties’ remaining
`claim construction briefing and VACATES the February 18, 2022 hearing, with the
`briefing schedule and hearing to be reset once this stay is lifted.
`IT IS SO ORDERED.
`Dated: January 26, 2022
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`_____________________________
`Honorable Todd W. Robinson
`United States District Judge
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