`
`
`
`SEL EXHIBIT NO. 2004
`
`
`CHI MEI INNOLUX CORP. v. PATENT OF SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`
`IPR2013-00064
`
`
`
`
`
`

`

`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 1 of 25 Page ID
` #:3413
`
`JEFFER MANGELS BUTLER & MITCHELL LLP
`STANLEY M. GIBSON (Bar No. 162329)
`sgibson@jmbm.com
`GREGORY S. CORDREY (Bar No. 190144)
`gcordrey@jmbm.com
`3 Park Plaza, Suite 1100
`Irvine, California 92614-2592
`Telephone: (949) 623-7200
`Facsimile:
`(949) 623-7202
`Attorneys for Defendants
`CHIMEI INNOLUX CORPORATION,
`CHIMEI OPTOELECTRONICS USA, INC.,
`ACER AMERICA CORPORATION,
`VIEWSONIC CORPORATION,
`VIZIO, INC.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.,
`Plaintiff,
`
`v.
`CHIMEI INNOLUX CORPORATION,
`CHI MEI OPTOELECTRONICS USA,
`INC., ACER AMERICA
`CORPORATION, VIEWSONIC
`CORPORATION, VIZIO, INC., and
`CUSTOMER DEFENDANTS
`DIGITAL, LLC,
`Defendants.
`
`CASE NO. SACV12-0021-JST (JPRx)
`DEFENDANTS' REPLY IN SUPPORT
`OF THEIR MOTION TO STAY
`LITIGATION PENDING OUTCOME
`OF INTER PARTES REVIEW
`
`Date:
`Time:
`Place:
`
`December 21, 2012
`2:30 p.m.
`Hon. Josephine Staton Tucker
`Courtroom 10A
`411 W. 4th St. # 1-053
`Santa Ana, California
`
`REPLY MEMORANDUM IN SUPPORT OF
`MOTION TO STAY PENDING OUTCOME OF
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 2 of 25 Page ID
` #:3414
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION...........................................................................................1
`
`ARGUMENT ..................................................................................................3
`
`A.
`
`B.
`
`C.
`
`As Congress Intended, CMI Will Use The IPR Proceedings To
`Determine The Validity of The Asserted Patents .................................3
`Inter Partes Review Proceedings Improved Upon Existing
`Reexamination Proceedings........................................................3
`
`1.
`
`2.
`
`3.
`
`CMI Spared No Expense Preparing And Filing the IPR
`Petitions.......................................................................................5
`
`CMI Timely Filed Its IPR Petitions............................................6
`
`The Standard For Staying An Action....................................................8
`
`This Case Is In Its Early Stages and Discovery Is Far From
`Complete ...............................................................................................9
`
`1.
`
`2.
`
`No Significant Events Have Yet Occurred In This Case ...........9
`
`SEL Refused A Claim Construction Briefing Schedule To
`Avoid Any Unnecessary Work.................................................11
`
`D.
`
`The IPR Proceedings Will Streamline and Simplify the Issues .........12
`
`1.
`
`2.
`
`3.
`
`The USPTO's Analysis of the Validity Issues Is Valuable to
`a Court Regardless of the Outcome..........................................12
`
`The Customer Defendants Agree To Be Bound By The
`Patent Office's Determinations on the IPR Proceedings ..........14
`
`The USPTO's Analysis May Inform, Or Provide Valuable
`Insight Into, Defendants' Section 112 Defenses and Their
`Inequitable Conduct Claims .....................................................14
`
`E.
`
`Defendants Will Expend Enormous Costs and Effort If This Case
`Is Not Stayed Pending the IPRs ..........................................................16
`
`1.
`
`The IPR Proceeding Is Designed to Avoid Prejudice Caused
`By An Extended Stay................................................................17
`
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 3 of 25 Page ID
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`TABLE OF CONTENTS
`[CONTINUED]
`
`Page
`
`2.
`
`3.
`
`A Stay Will Not Cause SEL Any Injury, Competitive Or
`Otherwise..................................................................................18
`
`SEL Will Not Suffer Harm to Its Reputation Because Its
`Practice For Commiting Inequitable Conduct Is Well
`Documented..............................................................................19
`
`III. CONCLUSION .............................................................................................20
`
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 4 of 25 Page ID
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`TABLE OF AUTHORITIES
`
`Pages
`
`CASES
`Akeena Solar Inc. v. Zep Solar Inc.,
`No. C 09-05040 JSW, 2010 WL 1526388 (N.D. Cal. Apr. 14, 2010).................8
`Aten Int’l Co. v. Emine Tech. Co.,
`No. 09-cv-0843, 2010 U.S. Dist. LEXIS 46226 (C.D. Cal. Apr. 12,
`2010)...........................................................................................................8, 9, 10
`Echostar Techs. Corp. v. TiVo, Inc.,
`No. 05-cv-81, 2006 U.S. Dist. LEXIS 48431 (E.D. Tex. July 14, 2006) ..........17
`Genoa Color Tech., Ltd. v. Samsung Elec. Am., Inc.,
`No. 7 Civ. 6233 (PKC), 2008 WL 754681 (S.D.N.Y. Mar. 12, 2008) ..............16
`Google, Inc. v. Function Media, L.L.C.,
`Appeal 2011-010724 ..........................................................................................15
`Inogen, Inc. v. Inova Labs, Inc.,
`Case No. SACV 11-1692-JST (Mar. 20, 2012) ...................................................8
`J.T. Eaton & Co. v. At. Paste & Glue Co.,
`106 F.3d 1563 (Fed. Cir. 1997) ..........................................................................13
`Kornit Digital Ltd. v. All Am. Mfg. & Supply Co Am. Mfg. & Supply Co.,
`SAVC 09-689 AG, 2010 U.S. Dist. LEXIS 48395, (C.D. Cal. Jan. 11,
`2010).....................................................................................................................8
`Krippelz v. Ford Motor Company,
`667 F.3d 1261 .....................................................................................................13
`Marine Polymer Technologies, Inc. v. HemCon, Inc.,
`672 F.3d 1350 (Fed. Cir. 2012) (en banc)............................................................5
`MH Sys., Inc. v. Peter McNulty,
`CV 05-7263 DSF, 2006 U.S. Dist. LEXIS 98642 (C.D. Cal. Oct. 23, 2006)....10
`Semiconductor Energy Laboratory Co., Ltd. v. Samsung Elecs. Co., Ltd., et al.,
`749 F.Supp.2d 892 (W.D. Wisc. Jan. 5, 2010)...................................................19
`
`i
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 5 of 25 Page ID
` #:3417
`TABLE OF AUTHORITIES
`
`Pages
`
`Semiconductor Energy Laboratory Co., LTD. v. Samsung Electronics Co.,
`LTD., et al., 204 F. 3d 1368 (Fed. Cir. 2000).........................................17, 18, 19
`Symantec Corp. v. M86 Sec., Inc.,
`No. SACV 10-1513-JST (C.D. Cal. Mar. 1, 2011) ..................................8, 12, 13
`STATUTES
`
`35 U.S.C. § 252..........................................................................................................5
`
`35 U.S.C. § 307..........................................................................................................5
`
`35 U.S.C. § 313........................................................................................................16
`
`35 U.S.C. § 314(1).....................................................................................................5
`
`35 U.S.C. § 315(e)(2).................................................................................................5
`
`35 U.S.C. § 316(a)(11)...........................................................................................4, 5
`OTHER AUTHORITIES
`
`H.R. Rep. No. 112-98, 112th Cong., 1st Sess. 46 (June 1, 2011) .........................3, 4
`
`Rule 3-3......................................................................................................................7
`
`Rule 26(f)...................................................................................................................9
`
`Manual of Patent Examining Procedure, 8th ed., rev. 9 (Aug. 2012) .....................19
`
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 6 of 25 Page ID
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`I.
`
`INTRODUCTION
`Defendants Chimei Innolux Corporation ("CMI"), Chimei Optoelectronics
`USA, Inc. ("CMO USA"), Acer America Corporation (“Acer”), ViewSonic
`Corporation ("ViewSonic”), and VIZIO, Inc. (“VIZIO”) (collectively, the
`“Defendants”) moved to stay the litigation pending the Inter Partes Review ("IPR")
`of the patents-in-suit. Between October 19, 2012 and November 30, 2012, CMI filed
`seven IPR petitions, each with a supporting expert declaration, demonstrating that the
`asserted claims of the patents-in-suit are invalid.1
`In its motion, Defendants explained that the Court should stay the case pending
`the inter partes review proceedings by the Patent Trial and Appeals Board for the
`following three independent reasons: First, the IPR process is fast--the validity of the
`six patents in suit will be determined by May 2014 (about 17 months from now).
`Second, the IPR process will either eliminate the need for trial by invalidating the
`patents-in-suit or it will significantly simplify the case. For example, Patent Office
`statistics for inter partes reexaminations indicate that of the 100 claims SEL asserted,
`the vast majority of them will be canceled or amended. Finally, staying the case
`during the pendency of the IPR will prevent the Court and the parties from engaging
`in time consuming and costly parallel proceedings, including claim construction and
`invalidity determinations, which the IPRs will render moot. In this case, the burden
`on the Court and the parties cannot be understated. SEL has asserted about 100
`claims from six patents dealing with complex technology related to LCD
`manufacturing. In their Joint Claim Construction and Prehearing Statement, the
`parties identified 31 terms that require construction. 2 Following the Court's
`
`1 See Supplemental Cordrey Declaration in support of Motion to Stay Litigation Pending Inter
`Partes Review, Dkt No. 104, and Exhibits 1-19.
`2 See Dkt. No. 101 [Joint Claim Construction and Prehearing Statement]. SEL moved the Court ex
`parte for an additional 35 pages for its opening claim construction brief based on its position that
`1
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 7 of 25 Page ID
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`construction of those 31 terms, the validity and infringement of each claim must be
`separately determined. If the litigation and IPR proceedings both proceed at the same
`time, the Court and the parties face the likely prospect of having the PTO canceling
`or amending a majority of the claims on the eve of the scheduled trial. Such a
`scenario would likely render much of Court’s and parties’ work useless.
`Indeed, for these reasons SEL concedes that there is a "liberal policy in favor
`of granting motions to stay proceedings pending the outcome of USPTO
`reexamination or reissuance proceedings." But, it asserts that this case involves
`"strikingly unusual factors" weighing against the liberal policy of granting stays. Yet,
`SEL fails to identify any "strikingly unusual factors" weighing against staying the
`litigation. For example, SEL focuses on the number of patents and argues that
`statistically some claims will survive. Implicit in SEL's argument is a concession that
`many, probably most, claims will not survive--at least not in their present form. In
`addition, in the Symantec case, this Court held that "[n]otwithstanding Plaintiff’s
`predictions as to how the patents-in-suit will fare in reexamination, this case will be
`simplified regardless of the USPTO’s decision" by virtue of having the benefit of the
`Patent Office’s analysis of the claims.3
`SEL also asserts that a stay should not be granted because the customer
`defendants are not bound by the IPR's estoppel provisions and thus they are free to re-
`litigate the same validity issues before the Court. To the contrary, CMO USA, Acer,
`ViewSonic and VIZIO agree to be bound by the estoppel provisions of the IPR
`proceedings.4 Westinghouse Digital also has agreed to be bound by the estoppel
`
`the number of disputed terms could not be briefed under the Local Rule's 25 page limit. See Dkt.
`No. 108; Cordrey Decl. ¶ 9.
`3 Symantec Corp. v. M86 Sec., Inc., No. SACV 10-1513-JST, ECF No. 26, slip op. at 3 (C.D. Cal.
`Mar. 1, 2011).
`
`4 To the extent there was any ambiguity on this issue, CMO USA, Acer, VIZIO, and ViewSonic
`hereby expressly confirm their agreement to be bound by the estoppel provisions of the IPRs
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 8 of 25 Page ID
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`
`provisions of the IPR proceedings provided that the Court grants a stay.5
`As explained below, SEL's other arguments against a stay similarly lack any
`merit. For these reasons and those explained below, the Defendants' motion to stay
`pending the IPR proceedings should be granted.6
`
`II.
`
`ARGUMENT
`A.
`As Congress Intended, CMI Will Use The IPR Proceedings To
`Determine The Validity of The Asserted Patents
`Inter Partes Review Proceedings Improved Upon Existing
`1.
`Reexamination Proceedings
`In 1999, Congress enacted an "inter partes" reexamination procedure.
`However, the procedure proved highly unpopular and fell far short of expectations.7
`
`proceedings.
`5 See Dkt. No. 107.
`6 At least four other district courts now have granted stays pending Inter Partes Review. See
`Proxyconn, Inc. v. Microsoft Corp., et al., Case No. SACV 11-1681 DOC (JPRx) (C.D. Cal.);
`Arnouse Digital Devices Corp., v. Motorola Mobility LLC, Case No. 5:11-cv-155 (D. Vermont);
`Tessera, Inc. v. Sony Electronics, Inc. et al., Civil Action No. 10-838-RMB/KNW (D. Del. );
`Clearlamp, LLC v. LKQ Corp., Case No. 1:12-cv-02533 (N.D. Ill. ). Counsel for Defendants was
`unable to identify any courts that have denied a stay pending Inter Partes Review.
`7 The House Committee Report noted:
`"In 1999, Congress created a second reexamination procedure—called inter partes
`reexamination—that gave third-party challengers greater input throughout the
`proceeding by permitting them to respond to every pleading submitted by the
`patent holder. ... Congress also eventually gave third-party challengers the right to
`appeal adverse decisions. ...
`"As part of the 1999 improvements to reexamination, Congress directed
`the USPTO to submit a report to Congress evaluating the inter partes
`reexamination process and making any recommendations for changes. ... Initially,
`the USPTO projected that in the first year after the creation of inter partes
`reexamination, it would receive 400 such requests and it projected that by 2004 it
`would receive nearly 600. ... No inter partes reexamination requests were actually
`filed in 2000 and only 27 such requests had been filed by 2004. ... Over the 5-year
`period studied by the USPTO, it issued 900,000 patents and received only 53
`requests for inter partes reexamination." H.R. Rep. No. 112-98, 112th Cong., 1st Sess. 46 (June 1,
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 9 of 25 Page ID
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`In the 2011 America Invents Act, Congress responded to the inadequacies of
`reexamination and ex parte examination by amending the reexamination statutes and
`by "creat[ing] adjudicative systems of post-grant and inter partes review." The 2011
`Act renames inter partes reexamination in Chapter 31 of Title 35 as "Inter Partes
`Review" and amends its provisions. See AIA 2011 § 6(a); See also H.R. Rep. No.
`112-98, 112th Cong., 1st Sess. 46-47 (June 1, 2011) ("The Act converts inter partes
`reexamination from an examinational to an adjudicative proceeding, and renames the
`proceeding "inter partes review.").
`Along with the creation of inter partes review, the America Invents Act
`(section 6(c)(3)(a)) established a transitional one-year period in which inter partes
`reexamination was utilized with a different threshold for granting such
`reexamination. The standard used during the one-year period was the same as that
`currently being used in inter partes review. Before the America Invents Act, the
`Director would grant a petition for inter partes reexamination if the reexamination
`request established a substantial new question of patentability (SNQ) affecting at
`least one claim in the patent. The threshold established by the AIA changed this
`standard to be the same as the standard now implemented by inter partes review. To
`institute an inter partes reexamination, the request must have shown there is a
`reasonable likelihood the petitioner will prevail with respect to at least one claim
`challenged in the request. The purpose of the new standard is to eliminate many of
`the petitions that would not succeed during review before a review is instituted.
`Under the substantial new question standard, around 95% of requests were being
`granted (H.R. Rep. No. 112-98 (Part 1), at 47).
`Beginning on September 16, 2012, the Patent Trial and Appeals Board
`(“PTAB”), which is constituted of a technically trained, panel of three Administrative
`
`2011).
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`Patent Judges (“APJs”) will examine patents for validity based on prior art in the
`form of printed publications. 35 U.S.C. § 316(c). The APJs are the highest authority
`within the PTO. To institute an IPR, the petitioner must demonstrate to the Patent
`Trial and Appeals Board that there is a reasonable likelihood that he/she would
`prevail as to at least one of the claims challenged. 35 U.S.C. § 314(1). Once a
`petition is filed, the PTO is statutorily required to decide whether to institute a review
`within three months of the PTO receiving a preliminary response by the patent owner
`or if no such preliminary response is filed, the last date on which such response may
`be filed. 35 U.S.C. § 314(b).
`If the proceeding is instituted and not dismissed, a final determination by the
`Board will be issued within one year (extendable for good cause by six months). 35
`U.S.C. § 316(a)(11). When the entire review process is complete, the PTO will issue
`an order that affirms the validity of the patent, cancels the patent, or modifies the
`patent. 35 U.S.C. § 307. Once a decision is made by the PTAB, both parties will be
`estopped from re-litigating the same invalidity issues that were raised or reasonably
`could have been raised during the IPR. See 35 U.S.C. § 315(e)(2). Any amendment
`or change to the claims gives rise to absolute or equitable intervening rights pursuant
`to 35 U.S.C. § 252, which excludes from liability any activities occurring before the
`amendment. See Marine Polymer Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350
`(Fed. Cir. 2012) (en banc).
`2.
`CMI Spared No Expense Preparing And Filing the IPR
`Petitions
`At great effort and expense, the Defendants have presented the PTO with
`invalidity rejections that previously were not considered by the PTO.8 See supra note
`
`8 SEL misleadingly focuses on whether the prior art was before the examiner during the prosecution
`of each patent. Yet, for four out of six patents, CMI’s petitions are based, in part, on prior art that
`was not cited in the original prosecution of the patents. The petitions for the remaining patents, the
`’480 and ‘978 patents, like the other petitions, include arguments that were not made during any
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 11 of 25 Page ID
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`
`1. Supported by expert declarations from experts in the field of LCD manufacturing,
`each petition CMI contained multiple arguments demonstrating that the asserted
`claims are invalid. Id. The filing fees alone for each petition are at least $27,000. In
`this case, CMI spent upwards of almost $200,000 to file seven petitions
`demonstrating that the asserted claims are invalid. This cost excludes the attorney
`and expert fees required to prepare the petitions. These efforts show that CMI did not
`file these petitions merely as a delay tactic, as SEL suggests, but intended to use IPR
`proceedings as Congress intended, which is to be an alternative to litigation for
`determining the validity of a patent. Had CMI merely intended to delay the
`enforcement of SEL’s patents, it would have filed ex parte or inter partes
`reexamination requests given that such proceedings routinely take more than three
`years to complete. 9
`CMI Timely Filed Its IPR Petitions
`3.
`Before CMI could begin to prepare its IPR petitions, it first needed to
`understand which claims SEL was asserting. In its complaint, SEL identified only 8
`claims from all six patents. Had CMI prepared and filed petitions based on the
`complaint, over 90 claims would have been left unresolved by the invalidity
`proceedings at the Patent Office. On the other hand, had CMI filed petitions for
`every claim in each of the asserted patents, it would have had to include invalidity
`arguments for 288 claims.10 Thus, as a practical matter, CMI could not begin
`preparation of its petitions until SEL identified the claims it intended to assert. 11
`
`previous examination of the patents. Thus, contrary to SEL’s insinuation, the petitions do not
`merely rehash arguments that previously were made.
`9 See Cordrey Decl. Ex. 3 [Inter Partes Reexamination Filing Data dated June 30, 2012] (average
`pendency of an inter partes reexamination is 36 months).
`10 At $600 for each claim over 20, this would have resulted in additional Patent Office filing fees of
`$88,800, notwithstanding the additional attorney and expert fees which are much more significant.
`11 SEL asserts that CMI should have filed a request for "Inter Partes reexamination at the beginning
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`Under the scheduling order in this case, the last day for SEL to serve its
`infringement contentions was July 30, 2012. Dkt. No. 50. SEL waited until the last
`day to serve its infringement contentions. Cordrey Decl. ¶ 7. In its infringement
`contentions, SEL identified nearly 100 claims from the six patents-in-suit and
`provided claim charts and related exhibits totaling more than 35,000 pages. Id. Thus,
`it was not until July 30 CMI first learned of the claims that SEL was asserting and
`only then could CMI begin preparing its IPR petitions.12
`From July 30 until September 13, the Defendants had a little over six weeks to
`prepare invalidity contentions (Patent Rule 3-3) for each of the asserted claims.
`Those invalidity contentions constituted approximately 700 pages of claim charts
`(including exhibits) along with nearly 2000 pages of prior art. Cordrey Decl. ¶ 8.
`During this time, SEL aggressively sought discovery from the Defendants by serving
`almost 500 document requests on them on the first day possible, knowing that the
`Defendants were busy preparing their invalidity contentions and their submissions to
`the Patent Office.13 Id.
`
`of the case" and "sought and been granted a stay at that time." Opp'n at 6. As explained above,
`CMI waited until SEL identified the asserted claims in this action and the September 16, 2012
`implementation of the IPR proceedings. SEL further asserts that, as a result, it "was forced to
`oppose motions to dismiss, to transfer, to delay the claim construction, to sever and stay and to
`bring a motion to compel." Id. SEL's argument is flawed. All but one of the motions that SEL
`"was forced" to oppose were granted. See Dkt No. 54 (granting, in part, Defendants' motion to
`dismiss); Dkt No. 89 (granting Defendants' motion to continue Markman hearing date); Dkt No. 99
`(denying SEL's motion to compel production of documents for 51 out of 66 document requests).
`The hearing on the Customer Defendants' motion to sever and stay has been continued to January
`25, 2013. See Dkt. No. 106.
`12 For the same reason, SEL’s assertion that CMI should have made substantial preparations so that
`it could file all of its IPR petitions on the September 16, 2012 date when IPR proceedings were
`implemented is unreasonable.
`
`13 In their proposed schedule, the Defendants proposed that the invalidity contentions be due on
`November 23, 2012 in order to avoid having to simultaneously work on both the invalidity
`contentions and the IPR petitions. SEL opposed Defendants' proposal and successfully argued for
`the September 13, 2012 deadline. See Dkt. No. 55-1 [Exhibit A] at 1. The Defendants also
`proposed to phase discovery to focus the initial discovery on the technical issues and defer the
`damages-related discovery until after the claim construction hearing. Dkt. No. 55 at 7.
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 13 of 25 Page ID
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`Despite the heavy (and unnecessary) demands SEL imposed on the
`Defendants, CMI was able to work with its technical experts to prepare seven IPR
`petitions with supporting expert declarations and file the first petition within ten
`weeks of SEL serving its infringement contentions.14 CMI filed the remaining six
`petitions over the subsequent six weeks. Accordingly, at great cost and effort, in a
`reasonably short amount of time from the date when SEL first identified the asserted
`claims, CMI was able to prepare and file comprehensive IPR petitions for each of the
`patents-in-suit, addressing rejections for each asserted claims on multiple grounds.
`See Dkt. No. 104 [Supplemental Cordrey Decl.] and Exs. 1-19 (constituting over
`3,000 pages of analysis and claim charts). This does not constitute delay and
`certainly not "inexcusable delay."15
`B.
`The Standard For Staying An Action
`As this Court is well aware, in considering whether to stay an action, courts in
`the Central District of California generally consider three factors: (1) whether
`discovery is complete and whether a trial date has been set; (2) whether a stay will
`simplify the issues in question and trial of the case; and (3) whether a stay will cause
`undue prejudice or a clear tactical disadvantage to the non-moving party. Symantec
`Corp. v. M86 Sec., Inc., No. SACV 10-1513-JST (C.D. Cal. Mar. 1, 2011). Courts in
`this District also repeatedly have held that there is a liberal policy in favor of granting
`motions to stay proceedings pending the outcome of a review in the patent office.
`See Inogen, Inc. v. Inova Labs, Inc. Case No. SACV 11-1692-JST (ANx), ECF No.
`
`14 It is also noteworthy that one of CMI's experts was unable to work on the petitions for a while due
`to the loss of power caused by Hurricane Sandy. This significantly contributed to the delay in filing
`all seven IPR petitions from the planned date of November 15 to November 30.
`15 See Inogen, Case No. SACV 11-1692-JST (ANx) (Document No. 39) (March 20, 2012) (ruling
`that a several month delay between the time when the Defendant knew about the infringement
`claims to when the Defendant sough reexamination did not "suggest a dilatory motive."); see also
`Akeena Solar Inc. v. Zep Solar Inc., No. C 09-05040 JSW, 2010 WL 1526388, at *3 (N.D. Cal. Apr.
`14, 2010) (finding no evidence of a dilatory motive when defendant requested a reexamination
`months after plaintiff filed its complaint and filed a motion to stay on the same day).
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`39 (Mar. 20, 2012); Aten Int’l Co. v. Emine Tech. Co., No. 09-cv-0843, 2010 U.S.
`Dist. LEXIS 46226, at *20 (C.D. Cal. Apr. 12, 2010); Kornit Digital Ltd. v. All Am.
`Mfg. & Supply Co., SAVC 09-689 AG, 2010 U.S. Dist. LEXIS 48395, at *5 (C.D.
`Cal. Jan. 11, 2010). As CMI demonstrated in its motion, under the circumstances
`present in this case these factors strongly favor staying this action. SEL fails to raise
`any facts that alter this conclusion.
`
`C.
`
`This Case Is In Its Early Stages and Discovery Is Far From
`Complete
`SEL does not dispute that this factor weighs in favor of staying the litigation
`where, as here, the motion to stay is filed in the early stages of the case. See e.g.,
`Aten, 2010 U.S. Dist. LEXIS 46226, at *21 (“This factor weighs in favor of a stay
`when the case is in the early stages of litigation.”). While SEL argues that this case
`has "moved far from its beginning," it concedes (as it must) that this case "is not near
`its end." Opp'n at 4. Yet, the events upon which SEL relies merely relate to activities
`that routinely occur in the early part of every case (e.g., filing of the complaint,
`responding to the complaint, serving initial disclosures, and serving initial
`contentions under the Patent Rules). And, the fact that the parties have exchanged
`documents is mostly due to SEL's efforts to accelerate discovery once it learned that
`the Defendants intended to initiate invalidity proceedings before the United States
`Patent and Trademark Office and stay the litigation pending the outcome of those
`proceedings.16
`No Significant Events Have Yet Occurred In This Case
`1.
`Notably, SEL does not dispute that the following key events have not yet
`occurred in this case:
`
`16 See Dkt. No. 55 [Joint Rule 26(f) Report] at 5-6 (disclosing Defendants' intention to have the
`patents-in-suit reexamined or reviewed at the USPTO and to stay the litigation).
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`Case 8:12-cv-00021-JST-JPR Document 110 Filed 12/07/12 Page 15 of 25 Page ID
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` Defendants have not served any document requests or written discovery
`on SEL
` No parties have taken any depositions
` Claim constructing briefs have not been filed
` No claim construction hearing has taken place
` No expert discovery has taken place
` No summary judgment motions have been filed
` Trial remains about 18 months away (May 6, 2014)
`The Defendants explained in their motion that courts in this District have found
`that a stay was appropriate in cases more advanced than this case. Aten Int’l Co. v.
`Emine Tech. Co., No. 09-cv-0843, 2010 U.S. Dist. LEXIS 46226, * 21-22 (C.D. Cal.
`Apr. 12, 2010) (granting stay despite the exchange of extensive discovery); MH Sys.,
`Inc. v. Peter McNulty, CV 05-7263 DSF, 2006 U.S. Dist. LEXIS 98642, *5-6 (C.D.
`Cal. Oct. 23, 2006) (granting stay despite fact that case had been