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`Exhibit 1
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`to
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`Case CBM2015-00096
`Patent No. 6,384,850
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`
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b)
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`Case 3:11-cv-01810-DMS-WVG Document 549 Filed 11/26/13 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`IN RE: AMERANTH PATENT
`LITIGATION CASES,
`
`CASE NO. 11cv1810 DMS (WVG)
`ORDER GRANTING DEFENDANTS’ MOTION TO
`STAY
`[Docket No. 520]
`
`This case comes before the Court on Defendants’ motion to stay this litigation pending review
`by the Patent Trial and Appeal Board (“PTAB”) of a petition for review of the validity of the patents
`in suit under the Transitional Program for Covered Business Method (“CBM”) Patents. Plaintiff filed
`an opposition to the motion, and Defendants filed a reply. For the reasons discussed below, the Court
`grants Defendants’ motion.
`
`I.
`BACKGROUND
`On October 15, 2013, the majority of Defendants in this case filed petitions with the PTAB
`seeking review of the validity of Plaintiff’s patents under the Transitional Program for CBM Patents.
`These Defendants filed four petitions, one directed at each of the four patents at issue in this case.
`Each petition challenges the validity of every claim of the respective patent.
`According to the Office Patent Trial Practice Guide, Plaintiff has three months, or until January
`15, 2014, to file a response to the petitions. The PTAB will have three months from the filing of
`Plaintiff’s responses or January 15, 2014, whichever is sooner, to determine whether to institute a trial
`/ / /
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`Case 3:11-cv-01810-DMS-WVG Document 549 Filed 11/26/13 Page 2 of 5
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`on the petitions. If the PTAB orders a trial, it will then have an additional twelve months to issue a
`final written decision on the petitions.
`
`II.
`DISCUSSION
`Defendants’ request for a stay is based on Section 18(b) of the America Invents Act (“AIA”).
`This statute provides:
`If a party seeks a stay of a civil action alleging infringement of a patent under section
`281 of title 35, United States Code, relating to a transitional proceeding for that patent,
`the court shall decide whether to enter a stay based on - -
`(A) whether a stay, or the denial thereof, will simplify the issues in question and
`streamline the trial;
`(B) whether discovery is complete and whether a trial date has been set;
`(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party
`or present a clear tactical advantage for the moving party; and
`(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the
`parties and on the court.
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 331 (2011). This test “resembles the one that
`courts have applied in assessing a motion to stay pending inter partes or ex parte reexamination by
`the PTO. Zillow, Inc. v. Trulia, Inc., No. C12-1549JLR, 2013 WL 5530573, at *3 (W.D. Wash. Oct.
`7, 2013) (citing Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P., 922 F.Supp.2d 486, 489 (D. Del.
`2013)). “The primary difference between this test and the one employed by courts in the ordinary
`patent reexamination context is the inclusion of the fourth factor regarding whether a stay will reduce
`the burden of litigation.” Id. (citing Market-Alerts, 922 F.Supp.2d at 489).
`A.
`Simplification of Issues and Trial
`Here, Defendants argue the imposition of a stay will simplify the issues and streamline any
`trial. Plaintiff disagrees. Although each side raises valid points, the imposition of a stay, in and of
`itself, will not simplify the issues or streamline the trial. Whether that will occur depends on the
`outcome of Defendants’ petitions, not whether a stay is or is not imposed. Until the PTAB issues
`decisions on the petitions, the Court can do no more than speculate about whether a stay will or will
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`Case 3:11-cv-01810-DMS-WVG Document 549 Filed 11/26/13 Page 3 of 5
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`not simplify the issues in this case or streamline any trial. Accordingly, this factor weighs against the
`imposition of a stay.1
`B.
`Status of the Case
`The next factor looks to the status of the case. In particular, whether discovery is complete
`and a trial date has been set. The simple answer to both of these questions is “no.” Although the first
`case in this group of cases was filed more than two years ago, Plaintiff continued to file additional
`cases against other Defendants over the course of those two years with the last case filed several
`months ago. The pleadings were settled only recently, Plaintiff has yet to serve preliminary
`infringement contentions on each Defendant and Defendants have yet to serve their preliminary
`invalidity contentions. Both sides blame each other for the slow progress of these cases, but the
`reason for the delay is secondary to the actual status of the case, and here, the case is still in its early
`stages. Under these circumstances, this factor weighs in favor of the imposition of a stay. See
`Market-Alerts, 922 F.Supp.2d at 494 (quoting SenoRx, Inc. v. Hologic, Inc., No. 12-173-LPS-CJB,
`2013 WL 144255, at *5 (D.Del. Jan. 11, 2013)) (“Staying a case at an early juncture ‘can be said to
`advance judicial efficiency and maximize the likelihood that neither the [c]ourt nor the parties expend
`their assets addressing invalid claims.’”)
`C.
`Prejudice to Plaintiff/Advantage to Defendants
`The next factor under the statute is whether the imposition of a stay would unduly prejudice
`Plaintiff or present a clear, tactical advantage for Defendants. In considering this factor, courts look
`“to additional considerations including the timing of the stay request, the timing of the administrative
`review request, the status of the review proceedings, and the relationship between the parties.” Id.
`The review process for CBM patents became available on September 16, 2012. Defendants
`waited slightly over one year to file their petitions for review, but given the uncertainty in these cases
`during that time, the Court cannot say the timing of Defendants’ requests for review was unreasonable.
`And once the petitions were filed, Defendants acted with haste, filing the present motion one week
`
`1 In the event the PTAB orders a trial on the petitions, this factor would weigh in favor of the
`imposition of a stay, as the petitions involve all of the patents at issue and all of the claims of the
`patents in suit. The PTAB proceedings could certainly simplify the issues in question by invalidating
`all or some of the claims or patents in suit, and could also assist with claim construction if the validity
`of the claims and patents is upheld.
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`Case 3:11-cv-01810-DMS-WVG Document 549 Filed 11/26/13 Page 4 of 5
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`after the petitions were filed. Under these circumstances, the Court cannot say Defendants
`unreasonably delayed the filing of their petitions or the present motion to stay, or that their decision
`to do either is solely an attempt to delay this litigation.
`As for the relationship between the parties, Defendants assert, and Plaintiff does not dispute,
`that Plaintiff is not a direct competitor of any Defendant. Under these circumstances, and in the
`absence of any evidence of dilatory motive on Defendants’ part, this factor weighs in favor of the
`imposition of a stay. See id. at 495-96 (“The potential for excessive prejudice is reduced by the fact
`that the parties do no directly compete with each other, and there is no evidence of dilatory motive on
`the part of the defendants.”)
`D.
`Burden of Litigation
`This last factor for the Court’s consideration is whether the imposition of a stay will reduce
`the burden of litigation on the parties and the Court. This factor “was added in order to ease the
`movant’s task in demonstrating the need for a stay.” Zillow, 2013 WL 5530573, at *3 (citing Market-
`Alerts, 922 F.Supp.2d at 489-90). Indeed, the inclusion of this factor “was designed to increase the
`likelihood that the court will grant a stay when a party initiates a transitional CBM review as opposed
`to an ordinary PTO reexamination.” Id. (citing Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill.,
`Nos. 1:10CV01370, 1:11CV00082, 1:12CV01068, 1:12CV01070, 2013 WL 1662952, at *3 (N.D.
`Ohio Apr. 17, 2013)). See also Sightsound Technologies, LLC v. Apple, Inc., No. 11-1292, 2013 WL
`2457284, at * 1 (W.D. Penn. June 6, 2013) (quoting 157 Cong. Rec. S1053) (stating statute “‘places
`a very heavy thumb on the scale in favor of a stay being granted.’”)
`Here, there is no dispute that a stay would reduce the burden of litigation on the parties and
`the Court. Specifically, the parties would be relieved of their current obligations to prepare
`infringement and invalidity contentions and conduct claim construction discovery. The Court would
`also be relieved of its obligation to construe the claims and resolve any other issues that may arise
`during the course of litigation. Thus, this factor, too, weighs in favor of the imposition of a stay.
`
`III.
`CONCLUSION AND ORDER
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`Case 3:11-cv-01810-DMS-WVG Document 549 Filed 11/26/13 Page 5 of 5
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`Considering the factors discussed above, the Court GRANTS Defendants’ motion to stay this
`case pending Defendants’ petitions for CBM review. Upon issuance of a final decision from the
`PTAB, the parties shall request that the stay be lifted so this case may proceed. The parties shall
`include a copy of the PTAB’s final action with that request. The Clerk of Court shall administratively
`close this case.
`IT IS SO ORDERED.
`DATED: November 26, 2013
`
`HON. DANA M. SABRAW
`United States District Judge
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