Case 2:18-cv-01844-GW-KS Document 652 Filed 02/13/20 Page 1 of 5 Page ID #:44487
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES - GENERAL
`Case No. CV 18-1844-GW-KSx
`Title
`BlackBerry Limited v. Facebook, Inc., et al.
`
`Date February 13, 2020
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`Terri A. Hourigan
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`James R. Asperger
`Heide L. Keefe
`Patrick Schmidt
`PROCEEDINGS:
`DEFENDANTS' RENEWED MOTION TO STAY PENDING
`INSTITUTED INTER PARTES REVIEW PROCEEDINGS [501]
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`Court hears oral argument. The Tentative circulated and attached hereto, is adopted as the Court’s Final
`Ruling. The Court would GRANT-IN-PART the motion to stay as to the remaining asserted patents that
`are now subject to instituted IPRs (recognizing that the validity of two of those asserted patents is
`already being considered on different bases on appeal). The Court would DEFER-IN-PART the motion
`to stay as to the ’236 and ’961 Patents until after resolution of certain pending summary judgment and
`Daubert motions related to those patents that are relevant to the question of infringement and/or
`invalidity of those patents.
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`The Court CONTINUES the hearing on all other pending motions in this case from February 20, 2020
`to February 27, 2020 at 8:30 a.m. It will decide whether resolution of the motions is necessary at that
`time, or some or all of them should be denied without prejudice to their renewal after the pendency of a
`stay.
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`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Case 2:18-cv-01844-GW-KS Document 652 Filed 02/13/20 Page 2 of 5 Page ID #:44488
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`BlackBerry Limited v. Facebook, Inc. et al; Case No. 2:18-cv-01844-GW-(KSx)
`Updated Tentative Ruling on Renewed Motion to Stay Case Pending Instituted Inter Partes
`Review Proceedings
`
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`Plaintiff BlackBerry Limited (“Plaintiff”) filed suit against Facebook, Inc., WhatsApp,
`
`Inc., and Instagram, LLC (collectively, “Defendants”) on March 6, 2018, alleging infringement of
`various patents. Docket No. 1; see also Docket No. 15 (First Amended Complaint).
`Defendants filed a motion to stay the case pending inter partes review (“IPR”) on April
`16, 2019 (Docket No. 161), but withdrew the motion after the Court stated its views at a status
`conference that it is disinclined to grant stays pending IPR proceedings until after the Patent Trial
`and Appeal Board (“PTAB”) has issued a decision indicating that it would actually institute an
`IPR. See Docket Nos. 166 at 2, 170.
`Defendants have now renewed their motion to stay pending IPR, noting that the PTAB has
`instituted IPR for all of the asserted claims of seven of the nine asserted patents.1 See Docket No.
`501 (public), 505 (sealed). The motion has been fully briefed. See Docket No. 550 (opposition),
`560 (reply).
`At a hearing held on the motion on January 30, 2020, the Court stated its tentative views
`that it was inclined to grant the motion. Docket No. 601. Plaintiff indicated that it intended to
`withdraw from this litigation two of the seven asserted patents subject to instituted IPR
`proceedings. The parties were permitted to file supplemental briefs regarding their understanding
`of the impact of the withdrawal of those two patents from this case on the question of whether the
`remaining case should still be stayed. Id. The parties subsequently did so. Docket No. 607-1,
`619.
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`Courts have discretion to control their dockets and ensure that their cases are managed in
`the interest of justice. See Clinton v. Jones, 520 U.S. 681, 706 (1997) (“[T]he District Court has
`broad discretion to stay proceedings as an incident to its power to control its own docket.”). In
`deciding whether to stay an action pending an IPR, a court’s discretion is typically guided by 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 would unduly
`
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`1 The Court previously found that two of the asserted patents in this case that are currently the subject of ongoing
`IPR proceedings were invalid under 35 U.S.C. § 101 and entered a partial final judgment for them, which is
`currently being considered on appeal.
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`prejudice or present a clear tactical disadvantage to the nonmoving party.” Aten Int’l Co., Ltd v.
`Emine Tech. Co., Ltd., No. SACV 09-0843 AG (MLGx), 2010 WL 1462110, at *6 (C.D. Cal. Apr.
`12, 2010) (quoting Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal.
`2006)); Murata Machinery, 830 F.3d at 1361; see also Semiconductor Energy Lab. Co., Ltd. v.
`Chimei Innolux Corp., No. SACV 12-0021 JST (JPRx), 2012 WL 7170593, at *1 & n.1 (C.D. Cal.
`Dec. 19, 2012) (stating that the same three-factor framework for staying the case applies regardless
`of whether a request for reexamination or an IPR is pending); Peter S. Menell et al., Fed. Judicial
`Ctr., Patent Case Management Judicial Guide (“Menell”) § 2.2.6.4.2 (3d ed. 2016). The inquiry,
`however, is not limited to these factors and “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).
`Expert discovery closed in this case in December 2019. Docket No. 480. The parties have
`filed all briefing on their summary judgment and Daubert briefs, and a summary judgment hearing
`is scheduled for February 20, 2020. See id. Trial is scheduled for April 13, 2020. Id. Although
`this case is not in its early stages, the fact that Defendants originally sought a stay in April 2019 is
`relevant. As Defendants note, significant pretrial work and expense remain in this case going
`forward.
`Plaintiff’s argument that a stay at this stage is “inherently prejudicial” is unpersuasive.
`Docket No. 550 at 5. Plaintiff’s generalized arguments of prejudice would be applicable to almost
`any plaintiff in a patent case. It is again relevant that this is not the first time Defendants have
`requested a stay pending IPR. The Court is not persuaded by Plaintiff’s arguments that Defendants
`improperly and tactically delayed in the filing of their IPR petitions in a way that causes undue
`prejudice to Plaintiff.
`Regarding simplification of the issues, the Court agrees with Defendants that, particularly
`as to the patents where IPR has been instituted, a stay has a high likelihood of simplifying the
`issues. Plaintiff’s arguments before the PTAB may ultimately be relevant in this case. Similarly,
`there may be questions relating to the scope of prior art invalidity arguments that Defendants will
`be permitted to maintain in this litigation after final written decisions are issued in the IPRs. Even
`though Plaintiff states that it intends to withdraw from this case two of the asserted patents subject
`to instituted IPR proceedings, including a patent where it has proposed claim amendments in IPR
`proceedings, and further states that it will not propose claim amendments during IPR proceedings
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`for any the claims that remain asserted in this case, simplification of the issues remains likely for
`the other reasons stated.
`As to the two patents that are not subject to instituted IPRs, Defendants state that they “filed
`compelling summary judgment motions against both of those patents . . . . BlackBerry also does
`not dispute that the ’236 and ’961 patents represent only a small fraction of this case.” Docket No.
`560 at 1. Indeed, Defendants alternatively propose that the parties proceed with litigation of these
`two patents while a stay is entered as to the other asserted patents. See, e.g. Docket No. 501-22
`(proposed order re Defendants’ motion to stay); Docket No. 505 at 5.
`Having considered the arguments presented, the Court would GRANT-IN-PART the
`motion to stay as to the remaining asserted patents that are now subject to instituted IPRs
`(recognizing that the validity of two of those asserted patents is already being considered on
`different bases on appeal). The Court would DEFER-IN-PART the motion to stay as to the ’236
`and ’961 Patents until after resolution of certain pending summary judgment and Daubert motions
`related to those patents that are relevant to the question of infringement and/or invalidity of those
`patents.
`The parties are ORDERED to file a joint report by February 18, 2020 identifying the
`portions of their summary judgment and Daubert motions that are related to infringement and/or
`invalidity of the ’236 and ’961 Patents, and thus the portions that would remain unstayed at this
`time. After the parties’ motions for those patents are resolved, the Court will consider whether a
`stay should nonetheless be entered as to any issues left for adjudication as to those two patents,
`such that any remaining asserted patents in this case can be the subject of a single trial after the
`resolution of all IPR proceedings and appeals. The parties are advised that in order to preserve
`judicial resources and focus the case to a single trial, the Court will likely enter a stay as to those
`patents if they are not found either invalid or noninfringed in the context of summary judgment
`proceedings.
`For reasons of judicial economy, the Court CONTINUES the hearing on all other pending
`motions in this case from February 20, 2020 to February 27, 2020. It will decide whether
`resolution of the motions is necessary at that time, or some or all of them should be denied without
`prejudice to their renewal after the pendency of a stay.
`The parties are otherwise directed to file a joint report within 10 days of each Final Written
`Decision reached by the PTAB in IPR proceedings as to the currently-stayed patents.
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