Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 1 of 9 Page ID #:614
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`JS-6
`
`Date: January 12, 2016
`
`
`
`PRESENT:
`
`
`
`
`
`
`
` Not Present
`Court Reporter
`
`ATTORNEYS PRESENT FOR DEFENDANT:
`None Present
`
`ORDER GRANTING MOTIONS TO
`STAY CASE PENDING INTER PARTES
`REVIEW [62], [36], [37], [35], [34], [38],
`[36], [36], [47]
`
`Deborah Goltz
`Courtroom Clerk
`
`
`ATTORNEYS PRESENT FOR PLAINTIFF:
`None Present
`
`
`
`
`
`
`
`
`
`
`
`PROCEEDINGS (IN CHAMBERS):
`
`
`
`
`
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0656-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`Title: LIMESTONE V. MICRON TECHNOLOGY, ET AL.
` LIMESTONE V. DELL INC.
`
` LIMESTONE V. LENOVO UNITED STATES INC.
`
` LIMESTONE V. HEWLETT PACKARD COMPANY
`
` LIMESTONE V. ACER AMERICA CORPORATION
`
` LIMESTONE V. KINGSTON TECHNOLOGY CO INC.
`
` LIMESTONE V. PNY TECHNOLOGIES, INC.
`
` LIMESTONE V. TRANSCEND INFORMATION, INC.
`
` LIMESTONE V. OCZ STORAGE SOLUTIONS, INC.
`
` LIMESTONE V. APPLE INC.
`
`
`
`THE HONORABLE DAVID O. CARTER, JUDGE
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 1
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 2 of 9 Page ID #:615
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Date: January 12, 2016
` Page 2
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`
`Defendants Micron Technology, Inc. (“Micron”), Dell Inc. (“Dell”), Lenovo
`United States Inc. (“Lenovo”), Hewlett Packard Company (“Hewlett Packard”), Acer
`America Corporation (“Acer”), Kingston Technology Co Inc. (“Kingston”), PNY
`Technologies, Inc. (“PNY”), Transcend Information, Inc. (“Transcend”), OCZ Storage
`Solutions, Inc. (“OCZ”), and Apple Inc. (“Apple”) (collectively, “Defendants”) have
`each filed a Motions to Stay Case Pending Inter Partes Review.1 Because the issues and
`arguments raised in the motions are similar, the Court addresses all ten motions in an
`omnibus order. The Court finds the matter appropriate for resolution without oral
`argument. Fed. R. Civ. P. 78; L.R. 7-15. Having reviewed the moving papers and
`considered the parties’ argument, the Court hereby GRANTS the Motions to Stay the
`Cases Pending Inter Partes Review.
`I.
`
`Background
`
`Plaintiff Limestone Memory Systems LLC (“Limestone”) is a California
`
`corporation that “is in the business of licensing patented technology.” Complaint
`(“Compl.”) (Dkt. 1) ¶ 1.2 On February 7, 2015, Limestone filed a Complaint styled
`Limestone v. Micron, et al., alleging willful infringement of three patents (“Micron
`Matter”). On April 23, 2015, Limestone filed its First Amended Complaint (“FAC”)
`asserting two additional patents (Dkt. 32). On April 23, 2015, Limestone initiated
`separate lawsuits against Defendants Dell, Lenovo, Hewlett Packard, Kingston, PNY,
`OCZ, Transcend, and Acer alleging willful infringement. Several months later, on August
`10, 2015, Limestone filed an additional lawsuit against Apple.
`
`Broadly, Limestone alleges that Micron manufactures DRAM and flash memory
`
`chips that infringe Limestone’s patents. Id. ¶ 26. Limestone further alleges that the non-
`Micron Defendants have violated its patents by incorporating the infringing Micron chips
`into its products. See, e.g., id. ¶ 14. Limestone specifically alleges infringement of U.S.
`Patent Nos. 5,805,504 (“the ‘504 patent”), 5,894441 (“the ‘441 patent”), 5,943,260 (“the
`‘260 patent”), 6,233,181 (“the ‘181 patent”), and 6,697296 (“the ‘296 patent”).
`
`1 See Case No. 15-0278 (Dkt. 62); Case No. 15-0648 (Dkt. 35); Case No. 15-0650 (Dkt. 37); Case No. 15-0652
`(Dkt. 35); Case No. 15-0653 (Dkt. 34); Case No. 15-0654 (Dkt. 38); Case No. 15-0656 (Dkt. 39); Case No. 15-0657
`(Dkt. 36); Case No. 15-0658 (Dkt. 32); Case No. 15-1274 (Dkt. 47).
`2 Unless otherwise noted, all citations to the Complaint and other docket entries are from the Limestone v. Micron,
`et. al. matter, Case No. 15-0278.
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 2
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 3 of 9 Page ID #:616
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`Limestone has asserted only one patent against some Defendants, while asserting all five
`patents against others.
`
`Date: January 12, 2016
` Page 3
`
`On October 27, 2015, Micron filed petitions for inter partes review (“IPR”) with
`
`the United States Patent and Trademark Office (“USPTO”) that challenge all five of the
`patents asserted in this case.3 Micron contends that “twenty[-]three of the twenty[-]six
`asserted claims are unpatentable due to either anticipation or obviousness.” Mot. at 2.4 By
`statute, the Patent Trial and Appeal Board (“PTAB”) is required to decide whether
`institute the IPR petitions by April 27, 2016, and if decides to do so, it must render a
`decision regarding unpatentability within twelve months of institution.
`
`In the Micron Matter, Defendant Micron filed a Motion to Stay on December 1,
`
`2015 (Dkt. 62). Limestone opposed the Motion to Stay on December 21, 2015 (Dkt. 64),
`and Defendant replied on December 28, 2015 (Dkt. 65). At various points in December,
`each of the non-Micron Defendants filed separate Motions to Stay the cases pending inter
`partes review.
`II.
`
`Legal Standard
`
`Courts in this District consider three factors in determining whether to stay a case
`pending IPR: “(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 would unduly prejudice or present a clear tactical disadvantage to the
`nonmoving party.” Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp.
`
`2d 1028, 1030–31 (C.D. Cal. 2013).
`
`The inquiry is not limited to these three factors. Rather, “the totality of the
`circumstances governs.” Allergan Inc. v. Cayman Chem. Co., No. SACV 07–01316 JVS
`(RNBx), 2009 WL 8591844, at *2 (C.D. Cal. Apr. 9, 2009) (citation omitted). “Courts
`have inherent power to manage their dockets and stay proceedings, including the
`
`3 IPR2016-00093 (the ‘504) patent; IPR2016-00094 (the ‘441 patent); IPR2016-00095 (the ‘260 patent); IPR2016-
`00096 (the ‘181 patent); and IPR2016-00097 (the ‘296 patent).
`4 Micron states that it did not file challenge the remaining three claims because Limestone’s infringement allegations
`with respect to those claims are “particularly baseless.” Mot. at 3. Instead, “Micron has demanded that these
`allegations be withdrawn and is currently awaiting a response.” Id.
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 3
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 4 of 9 Page ID #:617
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v.
`Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (citations omitted).
`
`Date: January 12, 2016
` Page 4
`
`Though a stay is never required, it may be “particularly justified where the
`outcome of the reexamination would be likely to assist the court in determining patent
`validity and, if the claims were cancelled in the reexamination, would eliminate the need
`to try the infringement issue.” In re Cygnus Telecomms. Tech., LLC, Patent Litig., 385 F.
`Supp. 2d 1022, 1023 (2005) (citing Gould v. Control Laser Corp., 705 F.2d 1340, 1342
`(Fed. Cir. 1983)). Indeed, “an auxiliary function [of the IPR] is to free the court from any
`need to consider prior art without the benefit of the PTO's initial consideration.” In re
`Etter, 756 F.2d 852, 857 (Fed. Cir. 1985). Thus, “[t]here is a liberal policy in favor of
`granting motions to stay proceedings pending the outcome” of re-examination, especially
`in cases that are still in the initial stages of litigation and where there has been little or no
`discovery.” Aten, 2010 WL 1462110, at *6 (quotations omitted).
`
`
`III. Discussion
`
`The Court will now assess the three factors in determining whether a stay is
`appropriate.
`A.
`
`Stage of the Proceeding
`
`The first factor is the stage of the proceedings, including “whether discovery is
`complete and whether a trial date has been set.” Aten Intern, Co., Ltd. v. Emine Tech. Co.,
`Ltd., 2010 WL 1462110, at *6 (citations omitted). Micron contends its “case is still in its
`infancy.” Mot. at 4. The company notes that while the parties have exchanged initial
`disclosure information, discovery has not begun for the Non-Micron Defendants, no
`depositions have been conducted in the case, “Plaintiff has not served a single
`interrogatory, no invalidity contentions or claim constructions have been exchanged, and
`no expert discovery has been undertaken.” Id. Thus, Micron argues that a stay will serve
`to conserve both the parties and Court’s resources. Id. at 5; see Universal Electronics,
`943 F. Supp. 2d at 1031 (“The Court’s expenditure of resources is an important factor in
`evaluating the stage of the proceedings.”). Further, the Court notes that it has not yet set a
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 4
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 5 of 9 Page ID #:618
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`trial date for any of the ten consolidated cases. See Minute Order Re: Dates for
`Scheduling Conference and Plaintiff’s Motion to Consolidate (Dkt. 56) at 2.
`
`Date: January 12, 2016
` Page 5
`
`Limestone contends the litigation has materially progressed. Opp’n at 14.
`Specifically, Limestone notes that “discovery is well under way, though not complete.”
`Id. Limestone notes that it “has served its infringement contentions and by January 21,
`2016 Micron will have served its non-infringement and invalidity contentions.” Id.
`Limestone adds that the “parties have spent months negotiating a stipulated protective
`order, but to no avail.” Id.
`
`The Court agrees with Micron that these cases are still in their infancy. Discovery
`is still in its early stages (and in fact has not yet begun for some Defendants), the parties
`have not briefed the Court on claim construction, and the Court has not set a trial date.
`“[C]onsidering the general time line of patent litigation, there is more work ahead of the
`parties and the Court than behind the parties and the Court.” Semiconductor Energy
`Laboratory Co., Ltd. v. Chimei Innolux Corp., No. SACV 12-21-JST (JPRx), 2012 WL
`7170593 (C.D. Cal. Dec. 19, 2012) (quoting Tierravision, Inc. v. Google, Inc., No.
`11cv2170 DMS (BGS), 2012 WL 559993, at *2 (S.D. Cal. Feb. 21, 2012) (granting stay
`where Markman briefs were soon due and parties had exchanged proposed claim
`constructions and extrinsic evidence). Courts in this district have found stays warranted
`under similar circumstances. Big Baboon, Inc. v. Dell, Inc., No. CV 09- 1198 SVW
`(SSx), 2011 U.S. Dist. LEXIS 155536, at *46 (C.D. Cal. Feb. 8, 2011) (finding a stay
`appropriate where discovery had continued for over a year, no claim construction had
`been undertaken, and no trial date had been set).
`
`Because these cases are still in its very early stages, this factor weighs heavily in
`favor of granting a stay.
`B.
`
`Simplification of Issues in Question
`
`The second factor the Court considers is “whether a stay will simplify the issues in
`question and trial of the case.” Aten, 2010 WL 1462110, at *6. “[W]aiting for the
`outcome of the reexamination could eliminate the need for trial if the claims are cancelled
`or, if the claims survive, facilitate trial by providing the court with expert opinion of the
`PTO and clarifying the scope of the claims.” Target Therapeutics, Inc. v. SciMed Life
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 5
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 6 of 9 Page ID #:619
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Date: January 12, 2016
` Page 6
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`Sys., Inc., No. C-94-20775 RPA (EAI), 1995 WL 20470, at *2 (N.D. Cal. Jan. 13, 1995).
`“[T]he assistance of the PTO is particularly helpful when a party has requested PTO
`review of many claims of the patents-in-suit.” Pi-Net Int’l, Inc. v. The Hertz Corp., No.
`2:12-cv-10012 (C.D. Cal. June 5, 2013), at 4; see also Pragmatus AV, LLC v. Facebook,
`Inc., No. 11-CV-02168-EJD, 2011 WL 4802958, at *3 (N.D. Cal. Oct. 11, 2011) (staying
`action pending inter partes reexamination in part because the defendant’s request for
`reexamination included all claims at issue in the litigation). Here, Micron has requested
`review of twenty-three of the twenty-six asserted claims.
`
`Micron argues that “[t]he cancellation of even one of these claims will reduce the
`burden on the Court by eliminating the need for discovery, claim construction, dispositive
`motions, or trial regarding that claim.” Mot. at 5–6. Micron further argues that “the
`cancellation of even just a handful of claims could eliminate defendants in the Related
`Cases,” noting that the ‘260 patent, for example, is the only patent asserted against
`Defendants Transcend and PNY. Id. at 6. At a minimum, Micron argues that the IPR is
`“guaranteed to finally resolve at least some issues of validity because the requesting party
`is barred from seeking district court review on any grounds it could have raised in
`reexamination.” Semiconductor, 2012 WL 7170593, at *2 (quoting Avago Techs. Fiber
`IP (Sing.) Pte. Ltd. v. IPtronics, Inc., No. 10-CV-02863-EJD, 2011 WL 3267768, at *5
`(N.D. Cal. July 28, 2011)). Indeed, Micron “will be estopped pursuant to 35 U.S.C.
`§ 315(e)(2) from raising various invalidity grounds in the litigation.” The Court notes that
`all nine of the non-Micron Defendants have agreed to be bound by estoppel as well. See
`Reply at 2; see Semiconductor, 2012 WL 7170593, at *2 (“But Defendants who did not
`file the IPR petitions have agreed to be bound by the estoppel provisions of the IPR
`proceedings . . . . Thus, the Court give the estoppel effect of the proceedings full
`weight.”).
`
`In response, Limestone first argues “the IPR will not resolve all issues in this case,
`since Micron’s IPR petitions do not challenge claims 13-15 of the ‘296 patent, which are
`currently asserted” in the litigation. Opp’n at 7. Limestone contends a stay should not be
`granted “for this reason alone.” Id. at 8. Limestone next argues that because there is no
`guarantee the IPR petitions will be instituted, the Court should not grant a stay.
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 6
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 7 of 9 Page ID #:620
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Date: January 12, 2016
` Page 7
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`
` The Court does not find either of Limestone’s arguments persuasive. First,
`Limestone boldly asserts that because the IPR process will not completely resolve all of
`the claims in the instant litigation, a stay is unwarranted. But it is well-established that the
`IPR proceedings need not resolve every single asserted claim. See, e.g., PersonalWeb
`Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1028 (finding simplification when only
`fifteen of the thirty-four claims were directly subject to inter partes review); Pegasus
`Devel. Corp. v. DirectTV, Inc., No. Civ. A. 00-1020-GMS, 2003 WL 21105073, at *1–2
`(D. Del. May 14, 2003) (noting the benefits of granting a stay pending reexamination
`include potentially narrowing the issues, reducing the complexity and length of trial,
`alleviating discovery problems relating to prior art, and encouraging settlement or even
`dismissal if the patent is declared invalid). As Defendants point out, Limestone “conflates
`simplification of the issues with total resolution of the case, which is not a factor
`considered by the court when addressing a motion to stay.” E-Watch, Inc. v. Lorex Can.,
`Inc., No. H-12-3314, 2013 WL 5425298, at *6 (S.D. Tex. Sept. 26, 2013).
`
`Second, the Court does not find Defendants’ motions to be premature. As Judge
`Phillips recently explained,
`
`[I]f an IPR is not instituted, the stay will be relatively short and the
`action can continue with minimal delay. If, on the other hand, the
`case is not stayed, but an IPR is instituted, the court will
`undoubtably be faced with another motion to stay, at which Plaintiff
`will argue that the stay should be denied due to the significant
`resources expended by the parties and the Court in the intervening
`months . . . . Thus, the risk of delay attending an unnecessary stay is
`minimal relative to the risk of unnecessary expenditure of resources
`should the stay be denied and an IPR subsequently commence.
`
`Wonderland Nursery Goods Co., Ltd. v. Baby Trend, Inc., No. EDCV 14-01153-VAP
`(SPx), 2015 WL 1809309, at *3 (C.D. Cal. Apr. 20, 2015). The exact same concerns
`apply to the present case. “Knowing whether the USPTO will commence inter partes
`review proceedings will require a relatively short pause in these proceedings, which
`could result in saving significant, and otherwise unnecessary expenditure of time and
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 7
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 8 of 9 Page ID #:621
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Date: January 12, 2016
` Page 8
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`resources by the parties and the Court.” Polymer Tech. Sys., Inc. v. Jant Pharmacal
`Corp., No. 2:15-cv-02585 (C.D. Cal. Aug. 20, 2015) (Dkt. 96), at 6.
`
`
`Because Defendants have petitioned for review of nearly all claims asserted in this
`action, the outcome of the IPR has the potential to significantly narrow the scope and
`complexity of the litigation. Further, “if an IPR is instituted and the claims are not
`cancelled, estoppel will prevent Defendants from raising in this Court invalidity grounds
`that were or could reasonably have been raised during the IPR.” Wonderland, 2015 WL
`1809309, at *3. In either scenario, “significant judicial resources will be saved.” Id.
`Therefore, the Court concludes that a stay has the potential to simplify the issues in this
`case. Accordingly, this factor weighs in favor of granting a stay.
`C.
`
`Undue Prejudice or Clear Tactical Disadvantage
`
`Finally, the Court considers “whether a stay would unduly prejudice or present a
`clear tactical disadvantage to the nonmoving party.” Aten, 2010 WL 1462110, at
`*6. Mere delay in the litigation does not establish undue prejudice. Research in Motion,
`Ltd. v. Visto Corp., 545 F. Supp. 2d 1011, 1012 (N.D. Cal. 2008); see also Sorensen ex
`rel. Sorensen Research & Dev. Trust v. Black & Decker Corp., No. 06–CV–1572 BTM
`(CAB), 2007 WL 2696590, at *4 (S.D. Cal. Sept. 10, 2007) (“Protracted delay is always
`a risk inherent in granting a stay, yet courts continue to stay actions pending
`reexamination. The general prejudice of having to wait for resolution is not a persuasive
`reason to deny the motion for stay.”).
`
`Micron argues that because “Limestone is a non-practicing entity, does not claim
`to practice the asserted claims, and does not design, make, or sell any products,” a stay
`will not unduly prejudice Limestone. Mot. at 7.
`
`In its Opposition, Limestone argues that staying the case would effectively provide
`Defendants with “a compulsory, royalty-free license to exploit” its patents. Opp’n at 12.
`Further, Limestone contends that a stay will stale the evidence and deny it of its chosen
`forum. Id. at 12–13.
`
`“Courts have repeatedly found no undue prejudice unless the patentee makes a
`specific showing of prejudice beyond the delay necessarily inherent in any stay.”
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 8
`
`

`
`Case 8:15-cv-01274-DOC-KES Document 52 Filed 01/12/16 Page 9 of 9 Page ID #:622
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Date: January 12, 2016
` Page 9
`
`Case No. SA CV 15-0278-DOC (RNBx)
`Case No. SA CV 15-0648-DOC (RNBx)
`Case No. SA CV 15-0650-DOC (RNBx)
`Case No. SA CV 15-0652-DOC (RNBx)
`Case No. SA CV 15-0653-DOC (RNBx)
`Case No. SA CV 15-0654-DOC (RNBx)
`Case No. SA CV 15-0657-DOC (RBNx)
`Case No. SA CV 15-0658-DOC (RNBx)
`Case No. SA CV 15-1274-DOC (KESx)
`
`PersonalWeb, 69 F. Supp. 3d at 1029. Because Limestone “merely points to generalized
`harm such as the potential loss of evidence and availability of witnesses,” the Court is
`unconvinced that Limestone will suffer undue prejudice.5 Further, because Limestone is a
`non-practicing entity, the Court finds that any damages it may ultimately prove will likely
`be compensable. Avago, 2011 WL 3267769, at *5 (“Unlike patent infringement actions
`involving non-practicing entities, infringement among competitors can cause harm in the
`marketplace that is not compensable by readily calculable money damages.”); see also
`TAS Energy, Inc. v. San Diego Gas & Elec. Co., No. 12cv2777-GPC(BGS), 2014 WL
`2511308, at *3 (S.D. Feb. 26, 2014) (“The fact that the parties are not competitors weigh
`in favor of a stay as any harm from a stay can be addressed through damages.”).
`
`As with the first two factors, the third factor weighs in favor of granting a stay.
`IV. Disposition
`
`For the foregoing reasons, the Court GRANTS the Motions to Stay Cases Pending
`Inter Partes Review. The ten cases shall be administratively closed pending the outcome
`of the inter partes review. The parties shall file a joint status report within 21 days of the
`USPTO’s decision whether to institute IPR proceedings.
`
`The Clerk shall serve this minute order on the parties.
`
`
`
`Initials of Deputy Clerk: djg
`
`
`MINUTES FORM 11
`CIVIL-GEN
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`
`
`5 Limestone also argues that because Micron is currently in “advanced talks” to be acquired by a Chinese chipmaker,
`there is no guarantee that Limestone “will have access to Micron’s source code or its technical documents.” Opp’n
`at 12. This contention is highly speculative and the Court does not find that it adequately shows undue prejudice.
`
`Patent Owner's Preliminary Response - Ex. 2001, p. 9