Case 1:12-cv-00398-GMS Document 43 Filed 12/02/13 Page 1 of 2 PageID #: 1510
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`HUMANEYES TECHNOLOGIES LTD.,
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`Plaintiff,
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`v.
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`SONY CORPORATION, SONY
`CORPORATION OF AMERICA, SONY
`ELECTRONICS INC., SONY MOBILE
`COMMUNICATIONS AB, AND SONY
`MOBILE COMMUNICATIONS (USA) INC.,
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`Defendants.
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`Civil Action No. 12-398-GMS
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`ORDER
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`Presently before the court in the above captioned matter is defendants' Motion to Stay
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`Litigation Pending the Outcome of Inter Partes Review of the Patents-in-Suit. 1 (DJ. 29.) A
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`decision to stay litigation lies within the sound discretion of the court.2 The court performs a
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`balancing analysis using the following three factors to determine if a stay is appropriate: "(1)
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`whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving
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`party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether
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`discovery is complete and whether a trial date has been set. "3 After considering the parties'
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`positions as set forth in their papers, as well as the applicable law, the court finds that a stay is
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`1 On March 29, 2012, the plaintiff brought the above-captioned action against the defendants alleging
`infringement of U.S. Patent Nos. 6,665,003and 7,477,284. (D.1. I.)
`2 See Cost Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985); Ethicon, Inc. v. Quigg, 849
`F.2d 1422, 1426-27 (Fed. Cir. 1988) (citations omitted) ("Courts have inherent power to manage their dockets and
`stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination.").
`3 First Am. Title Ins. Co. v. McLaren LLC, No. 10-363-GMS, 2012 WL 769601, at *4 (D. Del. Mar. 9,
`2012) (quoting Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 404, 406 (W.D.N.Y. 1999)).
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`Case 1:12-cv-00398-GMS Document 43 Filed 12/02/13 Page 2 of 2 PageID #: 1511
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`warranted here. The plaintiff is unlikely to suffer undue prejudice as a result of the stay. 4 Further,
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`the issues before the court will be simplified by the ongoing inter partes review proceedings of
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`all currently asserted claims,5 and the fact that this case remains in an early stage6 reinforces the
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`prospect that a stay pending review will advance the interests of judicial economy. Accordingly,
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`the court grants defendants' motion.
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`IT IS HEREBY ORDERED THAT:
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`1.
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`The defendants' Motion to Stay Litigation Pending the Outcome of Inter Partes
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`Review of the Patents-in-Suit (D.I. 29) is GRANTED; and
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`2.
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`This matter is STAYED pending resolution of the inter partes review of U.S.
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`Patent Nos. 6,665,003 and 7,477,284.
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`Dated: December )... , 2013
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`4 The timing of the inter part es review petitions and motion to stay present no evidence that the defendants
`sought an unfair tactical advantage. The defendants filed the inter part es petitions five months after termination of a
`parallel ITC action, and the motion to stay was filed three weeks after the petitions. (DJ. 30 at 12.) Additionally, the
`parties are not direct competitors, (DJ. 34 at 19), and HumanEyes can be adequately remedied for any delay by
`"money damages, including any appropriate interest accrued during the stay." In re Bear Creek Techs. Inc., No. 12-
`md-2344-GMS, 2013 WL 3789471, at *3 n.8 (D. Del. Jul. 17, 2013).
`5 The Patent Trial and Appeal Board ("PTAB") granted defendants' petitions and has instituted inter partes
`review of all asserted claims. (D.1. 42 at 1-2.) As such, the defendants will be estopped from asserting in a civil
`action any anticipation and obvious arguments based on patents or printed publications that were raised or
`reasonably could have been raised during the inter partes review proceeding. See 35 U.S.C. §§ 311, 315(e)(2),
`318(a). Moreover, a stay will allow the court and the parties to avoid wasting resources on a Markman process to
`address claims that may be amended or canceled. See Bear Creek, 2013 WL 3789471 at *3 n.8. And the court and
`the parties will have the benefit of the inter partes review record in any post-stay Markman process. See Gioel/o
`Enters. Ltd. v. Mattel, Inc., No. 99-375-GMS, 2001 WL 125340, at *l (D. Del. Jan. 29, 2001).
`6 Although the parties conducted fact discovery in preparation for the ITC proceeding, fact discovery is not
`complete, and the court has not yet entered a scheduling order or set a trial date.
`2