Case 3:18-cv-01783-CAB-BLM Document 148 Filed 02/18/20 PageID.10726 Page 1 of 4
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
` Case No.: 18-CV-1783-CAB-BLM
`
`ORDER GRANTING RENEWED
`MOTION TO STAY PENDING
`INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`[Doc. No. 140]
`
`BELL NORTHERN RESEARCH, LLC,
`
`Plaintiff,
`
`v.
`
`COOLPAD TECHNOLOGIES, INC. and
`YULONG COMPUTER
`COMMUNICATIONS,
`
`Defendants.
`
`
`COOLPAD TECHNOLOGIES, INC.,
`
`Counter Claimant,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`
`Counter Defendant.
`
`Before the Court is a renewed motion to stay this patent infringement case during
`
`the pendency of an Inter Partes Review (“IPR”) filed by defendant Coolpad Technologies
`
`Inc. [Doc. No. 140]. Plaintiff Bell Northern Research (“BNR”) opposes the motion. [Doc.
`
`No. 147.] The Court finds this motion suitable for determination on the papers submitted
`
`24
`
`25
`
`26
`
`27
`
`28
`
`1
`
`18-CV-1783-CAB-BLM
`
`Bell Northern Research, LLC, Exhibit 2023, Page 1 of 4
`
`

`

`Case 3:18-cv-01783-CAB-BLM Document 148 Filed 02/18/20 PageID.10727 Page 2 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`and without oral argument in accordance with Civil Local Rule 7.1(d)(1). Having
`
`considered the submissions of the parties, the motion is GRANTED.
`
`I.
`
`Background
`
`On August 1, 2018, BNR filed a complaint against Coolpad alleging infringement
`
`of five U.S. patents. Shortly thereafter, BNR dismissed its infringement claims for one of
`
`the asserted patents with prejudice. [Doc. No. 42.] The remaining four patents proceeded
`
`to claim construction and the court issued an order in August 2019. [Doc. No. 84.] At that
`
`time Coolpad filed a motion for stay as petitions for IPR had been filed on the remaining
`
`patents-at-issue. The Court denied the request for stay without prejudice and indicated
`
`10
`
`Coolpad could renew the request for stay if IPR was instituted on one or more of the
`
`11
`
`patents. [Doc. No. 86.]
`
`12
`
`13
`
`14
`
`Discovery proceeded and in October 2019, BNR dismissed with prejudice two more
`
`of the patents asserted against Coolpad. [Doc No. 98.] On January 29, 2020, the PTAB
`
`instituted IPR on the two patents remaining in this litigation, and Coolpad renewed its
`
`15
`
`motion for stay. [Doc. No. 140.]
`
`II. Legal Standard
`
`Courts have inherent power to manage their dockets and stay proceedings. See Landis
`
`v. N. Am. Co., 299 U.S. 248, 254 (1936). The party seeking a stay bears the burden of
`
`showing that such a course is appropriate. Id. at 256. Courts generally consider three factors
`
`in determining whether to impose a stay pending parallel proceedings before the Patent
`
`Trial and Appeal Board (“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 is set: and (3)
`
`whether a stay would unduly prejudice or present a clear tactical disadvantage to the
`
`nonmoving party. TAS Energy, Inc., v. San Diego Gas & Elec. Co., 2014 WL 794215, at
`
`*3 (S.D. Cal. Feb. 26, 2014). Judicial consideration is not limited to these factors, but
`
`rather can include a review of the totality of the circumstances. Am. GNC Corp. v. LG
`
`Elecs., Inc., 2018 WL 125876, at *2 (S.D. Cal. Mar. 12, 2018).
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`2
`
`18-CV-1783-CAB-BLM
`
`Bell Northern Research, LLC, Exhibit 2023, Page 2 of 4
`
`

`

`Case 3:18-cv-01783-CAB-BLM Document 148 Filed 02/18/20 PageID.10728 Page 3 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`A court’s consideration of a motion to stay should be guided by “the liberal policy in
`
`favor of granting motions to stay proceedings pending the outcome of USPTO
`
`reexamination or reissuance proceedings.” ASCII Corp. v. STD Entm’t USA, Inc., 844 F.
`
`Supp. 1378, 1381 (N.D. Cal. 1994). The Court further recognizes that the IPR proceeding,
`
`specifically tailored to patent validity adjudication, was created by Congress to provide a
`
`more streamlined and therefore faster and less expensive alternative to litigation. See H.R.
`
`Rep. No. 112-98(I) at 40 (“The legislation is designed to establish a more efficient and
`
`streamlined patent system that will improve patent quality and limit unnecessary and
`
`counterproductive litigation costs.”).
`
`III. Discussion
`
`Coolpad initially moved for this stay in August 2019, upon the filing of the petitions
`
`to institute IPR. The Court denied the motion as premature and indicated Coolpad could
`
`renew the motion if institution was granted. Immediately upon notice that the PTAB is
`
`instituting proceedings on the two patents remaining at issue in this litigation, Coolpad
`
`renewed its motion for a stay. Consequently, the Court does not find any undue delay on
`
`the part of the defendant. The IPR process ran its course and Coolpad moved promptly for
`
`17
`
`the relief it now seeks.
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Since the claim construction order issued in August much has been accomplished.
`
`Two of the patents in this litigation have been dismissed. Fact and expert discovery have
`
`concluded and dispositive motions have been filed, although not on the issue of patent
`
`validity. Motion practice has not concluded, pretrial disclosures have not been made and
`
`a trial date has not been set. Further the parties are jointly seeking construction of an
`
`additional claim term common to both the remaining two patents that may be significant
`
`to the validity challenges and may require additional expert discovery/depositions on
`
`25
`
`invalidity opinions.
`
`26
`
`27
`
`28
`
`The PTAB’s decision to institute on the two remaining patents will substantially
`
`impact the scope of this case and streamline this litigation, as well as co-pending litigation
`
`BNR has against ZTE Corp., in 18cv1786, in which BNR is asserting the same two patents.
`
`3
`
`18-CV-1783-CAB-BLM
`
`Bell Northern Research, LLC, Exhibit 2023, Page 3 of 4
`
`

`

`Case 3:18-cv-01783-CAB-BLM Document 148 Filed 02/18/20 PageID.10729 Page 4 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`The issue of validity will be resolved along with the construction of the remaining claim
`
`term.
`
` On balance the Court finds that to stay this litigation pending PTAB’s decision is
`
`justified. Despite the advanced nature of this case, this step will resolve an important aspect
`
`of the case and narrow the issues for a jury trial, and may avoid disparate invalidity findings
`
`in the co-pending cases. Coolpad was directed to bring the PTAB decisions on institution
`
`promptly to the Court’s attention, which it did. Having considered the efficiencies of
`
`proceeding in this litigation, the motion to stay [Doc. No. 140] is GRANTED, and this
`
`case is STAYED. The parties shall provide notice to the Court when the proceedings
`
`10
`
`before the PTAB are complete.
`
`11
`
`12
`
`13
`
`14
`
`In light of the foregoing, the pending motions to strike and for partial summary
`
`judgment [Doc. Nos. 132, 133, 134] are deemed WITHDRAWN, and the Clerk of Court
`
`is instructed to administratively close this case.
`
`It is SO ORDERED.
`
`15
`
`Dated: February 18, 2020
`
`
`
`
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`4
`
`18-CV-1783-CAB-BLM
`
`Bell Northern Research, LLC, Exhibit 2023, Page 4 of 4
`
`