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`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`BELL NORTHERN RESEARCH, LLC,
`
`Case No.: 18-CV-1783-CAB-BLM
`
`Plaintiff,
`
`v.
`
`COOLPAD TECHNOLOGIES, INC. et
`al.,
`
`ORDER ON REQUEST FOR
`PRE-INSTITUTION STAY
`OF THE LITIGATION
`
`Defendants.
`
`[Doc. No. 81]
`
`BELL NORTHERN RESEARCH, LLC,
`
`Case No.: 18-CV-1784-CAB-BLM
`
`Plaintiff,
`
`[Doc. No. 89]
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.
`et al.,
`
`Defendants.
`
`BELL NORTHERN RESEARCH, LLC,
`
`Case No.: 18-CV-1786-CAB-BLM
`
`Plaintiff,
`
`[Doc. No. 108]
`
`v.
`
`ZTE CORPORATION et al.,
`
`Defendants.
`
`Defendant Huawei Device Co. Ltd. (“Huawei”) filed a motion to stay litigation while
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`the Bell Northern Research LLC (“BNR”) patents asserted against it are under petition for
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`Inter Partes Review (“IPR”) by the U.S. Patent Trial and Appeal Board (“PTAB”) of the
`
`U.S. Patent and Trademark Office (“PTO”). [18cv1784, Doc. No. 82.] Defendants
`
`CoolPad Technologies, Inc. (“Coolpad”), and ZTE Corporation (“ZTE”) joined Huawei’s
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`1
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`18CV1783, 18CV1784, 18CV1786
`
`SAMSUNG EXHIBIT 1027
`
`Page 1 of 5
`
`

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`Case 3:18-cv-01786-CAB-BLM Document 110 Filed 08/12/19 PageID.5012 Page 2 of 5
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`motion. [18cv1783, Doc. No. 81; 18cv1786, Doc. No. 108]. BNR opposes the motions.
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`[18cv1783, Doc. No. 85; 18cv1784, Doc. No. 93.] The Court finds the motions suitable
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`for determination on the papers submitted and without oral argument in accordance with
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`Civil Local Rule 7.1(d)(1). For the reasons set forth below, the motions are Denied without
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`prejudice.
`
`I.
`
`Background
`
`On August 1, 2018 BNR filed separate patent infringement actions against CoolPad,
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`Huawei and ZTE asserting many of the same patents. As of November 29, 2018 the
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`following patents are at issue in these litigations:
`
`Patent
`6,941,1561
`8,792,4322
`7,957,450
`7,990,842
`8,416,862
`7,039,435
`7,319,889
`8,204,554
`
`CoolPad
`X
`
`
`X
`
`
`X
`X
`
`Huawei
`X
`X
`X
`X
`X
`X
`X
`X
`
`ZTE
`X
`X
`X
`X
`X
`X
`X
`X
`
`
`
`In accordance with the Court’s scheduling order, in April 2018, the parties jointly
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`submitted terms from the ‘156 Patent, the ‘889 Patent, the ‘554 Patent, the ‘435 Patent, the
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`‘842 Patent, the ‘450 Patent, and the ‘862 Patent, for claim construction. A claim
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`construction hearing was held on June 19 and 20, 2019. The Court issued its Claim
`
`Construction Order on August 9, 2019.
`
`
`
`1 On August 9, 2019, the Court issued a Claim Construction Order and Order on Defendants’ Motion for
`Summary Judgment of Invalidity due to Indefiniteness. Claim 1 of the ‘156 Patent was found indefinite
`and therefore invalid. Claim 1 was the only asserted claim of the ‘156 Patent. Under the local patent rules
`of this district, Plaintiff may elect to assert an alternative claim due to the Court’s Construction and
`therefore the ‘156 patent is not necessarily dismissed from the litigation.
`2 The’ 432 Patent was dismissed by joint motion from the ZTE litigation on November 29, 2018.
`
`2
`
`18CV1783, 18CV1784, 18CV1786
`
`ZTE Exhibit 1027-0002
`IPR2019-01365
`
`Page 2 of 5
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`

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`Case 3:18-cv-01786-CAB-BLM Document 110 Filed 08/12/19 PageID.5013 Page 3 of 5
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`During claim construction briefing, on June 14, 2019, Huawei notified the Court it
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`had filed for IPR on five of the eight patents asserted against it. On July 19, 2019, Coolpad
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`notified the Court it had filed for IPR on all four of the patents asserted against it. On
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`August 7, 2019, ZTE notified the Court it had filed for IPR on six of the eight patents
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`asserted against it. On that same date, Huawei also notified the Court it has filed for IPR
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`on a sixth patent. As of August 7, 2019, six of the eight patents at issue in these cases are
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`subject to petitions for IPR. Only the ‘432 Patent and the ‘450 Patent, both asserted against
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`Huawei and ZTE, are not subject to possible IPR institution by the PTAB.
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`On July 10, 2019, following the claim construction hearings, while the constructions
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`were still under submission, Huawei filed for a stay of the proceeding against it, pending
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`outcome of the IPRs it filed. On July 19, 2019, Coolpad joined Huawei’s motion for stay.
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`On August 7, 2019, ZTE joined Huawei’s motion for stay. On August 7 and 9, 2019, BNR
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`filed oppositions to the requests for stay.
`
`II. Legal Standard
`
`Courts have inherent power to manage their dockets and stay proceedings. The party
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`seeking a stay bears the burden of showing that such a course is appropriate. See Landis
`
`v. N.Am. Co., 299 U.S. 248, 255 (1936). A stay pending an administrative proceeding is
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`not automatic; rather, it must be based upon the circumstances of the case before the court.
`
`See Comcast Cable Commc’ns Corp. LLC v. Finisar Corp., No. 06-cv-04206-WHA, 2007
`
`WL 1052883, at *1 (N.D. Cal. Apr. 5, 2007) (“From a case management perspective, the
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`possible benefits must be weighted in each instance against the possible drawbacks.”).
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`Courts generally consider three factors to determine whether to impose a stay
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`pending parallel proceedings in the PTAB: (1) whether a stay will simplify the issues in
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`question and trial of the case; (2) whether discovery is complete and a trial date set; and
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`(3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the
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`nonmoving party. TAS Energy, Inc. v. San Diego Gas & Elec. Co., No. 12-cv-2777-GPC-
`
`BGS, 2014 WL 794215, at *3 (S.D. Cal. Feb. 26, 2014) (citing Telemac Corp. v.
`
`Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal. 2006)). Judicial consideration is
`
`3
`
`18CV1783, 18CV1784, 18CV1786
`
`ZTE Exhibit 1027-0003
`IPR2019-01365
`
`Page 3 of 5
`
`

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`Case 3:18-cv-01786-CAB-BLM Document 110 Filed 08/12/19 PageID.5014 Page 4 of 5
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`not limited to these factors, but rather can include a review of totality of the circumstances.
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`A court’s consideration of a motion to stay should be guided by “the liberal policy in favor
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`of granting motions to stay proceedings pending the outcome of USPTO reexamination or
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`reissuance proceedings.” ASCII Corp. v. STD Entm’t USA, Inc., 844 F. Supp. 1378, 1381
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`(N.D. Cal. 1994). The Court further recognizes that the IPR proceeding, specifically
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`tailored to patent validity adjudication, was created by Congress to provide a more
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`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
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`streamlined patent system that will improve patent quality and limit unnecessary and
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`counterproductive litigation costs.”).
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`III. Discussion
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`Although these cases were already in claim construction briefing when the parties
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`first notified the Court that petitions for IPR had been filed, the Court does not find any
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`undue delay. Claim construction has been resolved, but much discovery remains to be
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`completed, both fact and expert. The dispositive motions deadline and trial date have not
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`16
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`been set.
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`Huawei and ZTE have each submitted six of the eight patents asserted against them
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`for IPR. Coolpad has submitted all four of the patents asserted against it for review.
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`Decisions regarding institution will not issue until approximately January 2020.
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`PTAB decisions to institute on all the submitted patents will greatly impact the scope
`
`of this case. Even decisions to institute on less than all the patents have significant potential
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`to streamline this litigation. On the other hand, two of the patents asserted against Huawei
`
`and ZTE, the ‘432 patent and the ‘450 patent, are not subject to petitions and the outcome
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`of the IPR petitions will have no effect on the litigation of those patents.
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` On balance the Court finds that to stay this litigation entirely pending the PTAB’s
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`decision to institute is unjustified. While plaintiff may find itself stretched to meet the
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`schedule of the PTAB and the schedule of this Court, BNR does not request a stay. The
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`4
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`18CV1783, 18CV1784, 18CV1786
`
`ZTE Exhibit 1027-0004
`IPR2019-01365
`
`Page 4 of 5
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`

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`Case 3:18-cv-01786-CAB-BLM Document 110 Filed 08/12/19 PageID.5015 Page 5 of 5
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`
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`parties can proceed with any revised infringement and invalidity contentions in light to the
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`Court’s recently issued claim construction order, as well as fact and third-party discovery.
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`The parties are directed to bring the PTAB decisions on institution promptly to the
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`Court’s attention. Defendants may renew the requests for stay if institutions are granted,
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`at which time the Court will consider the efficiencies of proceeding, whether in whole or
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`in part, in these litigations. The motion for stay at this time is DENIED without prejudice.
`
`It is SO ORDERED.
`
`Dated: August 12, 2019
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`5
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`18CV1783, 18CV1784, 18CV1786
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`ZTE Exhibit 1027-0005
`IPR2019-01365
`
`Page 5 of 5
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