Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page1of8 Page ID #:3699
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.SACV19-1072PSG(ADSx)Date
`
`JS-6
`CIVIL MINUTES - GENERAL
`
`EDCV 19-1124 PSG (ADSx)
`February 25, 2021
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`Present: The Honorable
`
`Philip S. Gutierrez, United States District Judge
`
`Wendy Hernandez
`Deputy Clerk
`
`Not Reported
`Court Reporter
`
`Attorneys Present for Plaintiff(s):
`
`Attorneys Present for Defendant(s):
`
`Not Present
`
`Not Present
`
`Proceedings (In Chambers):
`
`The Court GRANTSthe motionto stay.
`
`Before the Court is a motion to stay the case pending inter partes review filed by
`Defendants Lowe’s Home Centers, LLC, Z-Shade Co. Ltd., Costco Wholesale Corporation, and
`Shelterlogic Corp. (“Moving Defendants”). See generally Dkt. # 168-1 (“Mot.”). Plaintiff
`Caravan Canopy International, Inc. (“Plaintiff”) opposed, see generally Dkt. # 169 (“Opp.”’), and
`Moving Defendants replied, see generally Dkt. # 170 (“Reply”). The Court finds the matter
`appropriate for decision without oral argument. See Fed. R. Civ. P. 78; L.R. 7-15. After
`considering the moving, opposing, and reply papers, the Court GRANTS Moving Defendants’
`motion to stay.
`
`L
`
`Background
`
`This is a patent infringement case. Plaintiff initiated this action on May 31, 2019,
`accusing various companies, including the Moving Defendants and Wal-Mart, of infringing one
`of its patents: U.S. Patent No. 5,944,040 (“the ‘040 patent’’).’ See generally Complaint, Dkt. # 1
`(“Compl.”).
`
`Patent No.: 5,944,040
`
`Petitioners Exhibit 1026
`
`IPR2021-00449
`
`' Plaintiffthen dismissed most of the defendants in the Complaintandrefiled individual cases
`against them. Mot. 2:15—19. Within a few months, the separate cases were consolidated under
`the lead case, No. SACV 19-1072 PSG (ADSx). See generally Dkt. #55.
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Page 1 of 8
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`Petitioners Exhibit 1026
`IPR2021-00449
`Patent No.: 5,944,040
`
`

`

`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page 2of8 Page ID #:3700
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`A,
`
`The IPR Proceedings and Walmart’s Motion to Stay
`
`Date
`
`February 25, 2021
`
`On June 1, 2020, Walmart filed a petition for inter partes review (“IPR”) with the Patent
`Office. Declaration of William J. Brown, Jr., Dkt. # 168-2 (“Brown Decl.”), J 6, Ex. B.
`Walmart then movedto stay the case against them pending the outcome of IPR proceedings, and
`the Court granted Walmart’s motion. See generally Order Granting Defendant’s Motionto Stay,
`Dkt. # 168 (“August 2020 Order”).
`
`On December 15, 2020, the Patent Office instituted a trial on Walmart’s petition for IPR,
`including three claims under the ‘040 patent. Jd. 46, Ex. C. The IPR 1sset for trial in
`September 2021. Id. Moving Defendants filed their own petition for IPR on January 15, 2021
`and movedto join their IPR with Walmart’s IPR. Jd. | 10, Exs. G—-H.
`
`B.
`
`Status of the Instant Case
`
`To date, the Court has set dates for trial and issued a claim construction order. See Dkts.
`# 30, 37. The parties stipulated to amend the scheduling order twice. See Dkts. # 122, 167.
`Underthe current scheduling order, opening expert reports were due on January 25, 2021,
`rebuttal expert reports are due March 1, fact discovery closes March 19,final dispositive
`motions must be filed by March 22, final pretrial conferences are scheduled for May 24, and a
`jury trial is set for June 8. See Dkts. # 122, 167.
`
`On November19, 2020, the Court struck Plaintiff's final infringement contentions. See
`Dkt. # 164. Plaintiff served its amended infringement contentions on November 27, 2020, and
`Moving Defendants intend to moveto strike the purportedly improper Accused
`Instrumentalities. Mot. 2:2—-5; Brown Decl. 5.
`
`On January 19, 2021, Moving Defendants movedto stay the case pending the outcome of
`the IPR proceedings. See generally Mot.
`
`Il.
`
`Legal Standard
`
`“Courts have inherent power to manage their dockets and stay proceedings, including the
`authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v. Quigg,
`849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (citation omitted). Courts generally consider three
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Page 2 of 8
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`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page 3of8 Page ID #:3701
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`Date
`
`February 25, 2021
`
`factors in deciding whether to grant a stay during IPR proceedings: (1) whether discovery is
`complete and whethera trial date has been set; (2) whether a stay will simplify the issues in
`question andtrial of the case; and (3) whether a stay would unduly prejudice or present a clear
`tactical disadvantage to the non-moving party. Wonderland Nursery Goods Co. v. Baby Trend,
`Inc., No. EDCV 14-01153-VAP, 2015 WL 1809309, at *2 (C.D. Cal. Apr. 20, 2015) (quoting
`Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1030-31 (C.D.
`Cal. 2013)). Courts should also consider the “totality of the circumstances” in evaluating
`whethera stay is proper. Jd. (“While the case law enumerates several general considerations that
`are helpful in determining whetherto order a stay, ultimately “the totality of the circumstances
`governs.’” (quoting Universal Elecs., 943 F. Supp. 2d at 1031)); see also E.Digital Corp. v.
`Dropcam, Inc., No. 14-CV-04922-JST, 2016 WL 658033, at *2 (N.D. Cal. Feb. 18, 2016)
`(“While case law supplies these general considerations, the Court ultimately must decide
`whether to issue a stay on a case-by-case basis.”’).
`
`“Thereis a ‘liberal policy in favor of granting motions to stay proceedings pending the
`outcome’ of re-examination, especially in cases thatarestill in the initial stages oflitigation and
`where there has been little or no discovery,” but “[c]ourts are not required to stay judicial
`proceedings pending re-examination of a patent.” Pi-Net Int’l, Inc. v. Hertz Corp., No. CV 12-
`10012 PSG (JEMx), 2013 WL 7158011, at *2 (C.D. Cal. June 5, 2013) (quoting Aten Int’l Co.
`Ltd. v. Emine Tech. Co., No. SACV 09-0843, AG (MGLx), 2010 WL 1462110, at *6 (C.D. Cal.
`Apr. 12, 2010)).
`
`Ill.
`
`Discussion
`
`The Court addresses each factor in turn.
`
`A.
`
`Stage of the Proceedings
`
`Thefirst factor asks the Court to consider the progress already madein the case, such as
`the completion of discovery, the setting of a trial date, and whether claim construction has
`occurred. See Wonderland Nursery, 2015 WL 1809309,at *2. “[D]istrict courts have adopted
`the date of the filing of the motion to stay” as the “proper time to measure the stage of
`litigation.” VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1316 (Fed. Cir. 2014)
`(collecting cases).
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Page 3 of 8
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`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page 4of8 Page ID #:3702
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`Date
`
`February 25, 2021
`
`In the order granting Walmart’s request to stay, the Court found that, although the Court
`had already issued its Claim Construction Order, the case wasin its early stages because the
`parties still needed to “(1) finish documentproduction, (2) conduct depositions, (3) complete and
`exchange expert reports, (4) file any dispositive motions, and (5) potentially proceed through a
`trial.” August 2020 Order at 3. Thus, the factor slightly favored granting a stay because “there
`remain[ed] ‘more work ahead of the parties and the Court than behind [them].’” Jd. at 3-4
`(quoting Limestone v. Micron Tech., No. SACV 15-00278-DOC (RNBx), 2016 WL 3598109,at
`*3).
`
`Moving Defendants argue that “[t]his litigation has not progressed significantly since
`Walmart movedto stay on June 18, 2020.” Mot. 5:10—-11. The parties extended the deadline to
`file opening expert reports twice, and they were not completed when Defendants filed the instant
`motion. Jd. 5:13-16. A single deposition has been taken—Walmart deposed E-Z Up,Inc. two
`days before the Court issued the order granting Walmart’s motion to stay. Brown Decl. ¥ 11.
`Additionally, according to Moving Defendants, “because Plaintiff improperly added numerous
`AccusedInstrumentalities as recently as November 27, 2020,the list of accused productsin this
`case remains unsettled.” Mot. 15:5-18; Brown Decl. J 5. Finally, the parties have yet to
`complete summary judgment motions,pretrial preparation and motions, and trial. Mot. 5:26—28.
`
`Plaintiffs disagree, but they only indicate progress in the case since Moving Defendants
`filed the motion. See Opp. 4:4—15. Plaintiffs state that expert reports were served by January
`25, and “only two discovery deadlines remain... : (1) the March 1 deadline for Rebuttal Expert
`Reports, and (2) the March 19 deadline for the Close of All Discovery.” Jd. Additionally,
`Plaintiff informs the Court that it has requested available deposition dates for each Moving
`Defendant. /d.n.4. However, becausethe filing of the instant motion is the appropriate date to
`measure the stage ofthe litigation, the Court does not consider this progress in weighingthis
`factor. See VirtualAgility, 759 F.3d at 1316.
`
`While this is a close call, the Court agrees with Moving Defendantthat the case is still in
`its early stages given that the parties have not advanced significantly in the months since the
`Court granted Walmart’s motion to stay. Although scheduling deadlines are approaching,
`discovery is far from over because the parties to this motion have not taken a single deposition.
`See Locata LBS, LLC v. Yellowpages.com, LLC, No. CV 13-7664 JAK, 2014 WL 8103949,at
`*2—*3 (C.D. Cal. July 11, 2014) (holding that the parties were in the early stages when they had
`engaged in somepreliminary discovery, including initial disclosures and serving document
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Page 4 of 8
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`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page5of8 Page ID #:3703
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`Date
`
`February 25, 2021
`
`requests and interrogatories, but depositions had yet to take place). Furthermore,the list of
`accused products remains unsettled, and the parties have yetto file dispositive motions and
`preparefor trial. As such, there remains “more work aheadofthe parties and the Court than
`behind [them].” Limestone, 2016 WL 3598109 at *3. Accordingly, this factor weighs slightly in
`favor of granting a stay.
`
`B.
`
`Simplify
`
`Issues
`
`The Court next considers whether a stay will simplify the issues in the case. See
`Wonderland Nursery, 2015 WL 1809309,at *2.
`
`Whengranting Walmart’s motion to stay, the Court found this factor weighed in favor of
`granting the motion because “the IPR challengesall of the claimsin a single patent, which
`means the scopeofthis suit is likely to be substantially narrowedif the patent office agrees with
`Defendant.” August 2020 Orderat 4.
`
`Moving Defendants contend that “[nJow that the IPR has beeninstituted, [this] factor...
`weighs even morestrongly in favor of staying thelitigation” because “[t]he [Patent Office] has
`instituted review on all claims of the ‘040 patent” and therefore “the IPR has the potential to
`fully resolve this case.” Mot. 6:13-24.
`
`Plaintiff does not address this argument, and arguments to which no response is supplied
`are deemed conceded. See, e.g., Tapia v. Wells Fargo Bank, N.A., No. CV 15-03922 DDP
`(AJWX), 2015 WL 4650066,at *2 (C.D. Cal. Aug. 4, 2015); Silva v. U.S. Bancorp, No. 5:10-cv-
`01854-JHN-PJWx, 2011 WL 7096576,at *3 (C.D. Cal. Oct. 6, 2011). Accordingly, this factor
`also weighs in favor of granting a stay.
`
`C.
`
`UnduePrejudice
`
`The final factor is whether a stay would unduly prejudice or present a clear tactical
`disadvantage to the non-moving party—here,Plaintiffs. See Wonderland Nursery, 2015 WL
`1809309, at *2. “In weighing the prejudice to the non-movingparty, courts consider four
`subfactors: ‘(1) the timing of the petition for review; (2) the timing of the request for the stay; (3)
`the status of review proceedings; and (4) the relationship ofthe parties.’”” E. Digital, 2016 WL
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page 6of8 Page ID #:3704
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`Date
`
`February 25, 2021
`
`658033, at *4 (quoting Cypress Semiconductor Corp. v. GSI Tech, Inc., No. CV 13-2013 JST,
`2014 WL 5021100, at *3 (N.D. Cal. Oct. 7, 2014)).
`
`Plaintiff does not meaningfully address these subfactors in its opposition. Instead,
`Plaintiff contends that “more delay would impact the integrity and completeness of the
`deposition testimony ultimately received from each Defendant” because such testimonywill
`have been given long after the accused infringement from 2013 to 2018. Opp. 4:23-5:1.
`However, Plaintiff does not indicate which witnesses’ testimony will fade over the course of the
`delay. Furthermore, Plaintiff's failure to depose a single witness demonstrates that this concern
`is not significant.
`
`The Court deemsPlaintiff's failure to address Moving Defendants’ arguments as a
`concession. See Tapia, 2015 WL 4650066, at *2. Nonetheless, the Court briefly addresses the
`four subfactors.
`
`i.
`
`Timing ofthe Petitionfor Review
`
`Moving Defendants argue this subfactor weighsin their favor “because Walmart filed its
`IPR request at an early stage of this lawsuit, before [Plaintiff] had even identified many ofthe
`products it has now accused ofinfringement.” Mot. 8:15—17. Further, Moving Defendants
`promise that “the IPR is on track for oral arguments in September, and Moving Defendants
`joining the IPR will not affect the schedule.” Jd. 8:22—24; Brown Decl. § 10, Ex. H at 10.
`
`The Court disagrees. In its August 2020 Order, the Court found that Walmart’s ten-
`month delay in filing an IPR petition weighed against granting a stay. August 2020 Order at 5.
`Moving Defendants’ promise that IPR proceedings will continue as planned doesnotalter the
`fact that the petition wasfiled so late in the game. As such, this subfactor weighs against
`granting a stay. See Int’l Test Sols., Inc. v. Mipox Int’l Corp., No. 16-CV-00791-RS, 2017 WL
`1316549, at *3 (N.D. Cal. Apr. 10, 2017) (cleaned up).
`
`ii.
`
`Timing ofthe Requestfor Stay
`
`Moving Defendants sought to join Walmart’s IPR within the period permitted underthe
`America Invents Act, and then filed the instant motion four days later. Mot. 8:26—9:3.
`Therefore, the timing of the request for the stay weighs in favor of granting the motion.
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`CV-90 (10/08)
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`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page 7of8 Page ID #:3705
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`iii.
`
`Status ofReview Proceedings
`
`Date
`
`February 25, 2021
`
`In its August 2020 Order, the Court found that this subfactor weighed against granting a
`stay because “[t]he Patent Office has not yet madean institution decision on the ‘040 patent.”
`August 2020 Order at 5. Now, the Patent Office hasinstituted a trial on all claims of the ‘040
`patent at issue in this litigation, and a final decision is expected by December 2021. Mot. 9:6—9.
`While the delay in the final determination inherently risks prejudice to Plaintiff, “the risk of
`delay in attending an unnecessary stay is minimalrelative to the risk of unnecessary expenditure
`of resources should the stay be denied.” Wonderland Nursery, 2015 WL 1809309, at *3. As
`such, this subfactor weighs in favor of granting thestay.
`
`iv.
`
`Relationship ofthe Parties
`
`Moving Defendants argue this subfactor weighsin their favor “because the asserted
`patent has expired, and therefore, Plaintiff cannot seek injunctiverelief.” Mot. 9:18-20. The
`Court agrees and findsthat this factor weighs in favor ofa stay.
`
`On balance, the Court finds that these subfactors weigh in favor of granting a stay.
`Although Walmart could havefiled the IPR petition earlier, the Court previously found that the
`delay in filing would not prejudice Plaintiff. In its opposition, Plaintiff failed to argue that new
`developments would prejudice Plaintiff in ways not previously considered by the Court. As
`such, Plaintiff has failed to make a “specific showing of prejudice beyondthe delay necessarily
`inherent in any stay.” Affinity Labs ofTexas, LLC v. Samsung Elecs. Co., No. 14-CV-2717
`YGR, 2014 WL 3845684, at *4 (N.D. Cal. Aug. 1, 2014).
`
`D.
`
`Balancing the Factors and Totality of the Circumstances
`
`In sum, the Court finds that the factors addressed above weigh in favor of granting a stay.
`Becausethe Patent Office instituted a trial on all claims of the ‘040 patent at issue, it makeslittle
`sense to continuelitigating in this forum when(1) the case is still in its early stages and (2) the
`Patent Office’s final decision will certainly impact the outcomeofthis case and will likely
`simplify the issues. Furthermore, (3) Plaintiff has not demonstrated undue prejudice.
`Accordingly, a stay is appropriate.
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Page 7 of 8
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`Case 8:19-cv-01072-PSG-ADS Document171 Filed 02/25/21 Page 8of8 Page ID #:3706
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`SACV 19-1072 PSG (ADSx)
`EDCV19-1124 PSG (ADSx)
`CV 19-6224 PSG (ADSx)
`CV 19-6952 PSG (ADSx)
`
`Title
`
`Caravan CanopyInt’l, Inc. v. Lowe’s Home Centers, LLC
`
`IV.
`
`Conclusion
`
`Date
`
`February 25, 2021
`
`For the foregoing reasons, the Court GRANTS Moving Defendants’ motion to stay
`pending the Patent Office’s decision on the IPR petition. This order administratively closes the
`following cases: (1) No. SACV 19-1072 PSG (ADSx); (2) No. EDCV 19-1124 PSG (ADSx);(3)
`No. CV 19-6224 PSG (ADSx); and (4) No. CV 19-6952 PSG (ADSx). Any of the parties may
`apply ex parte to reopen their case after the conclusion ofall IPR proceedings.
`
`IT IS SO ORDERED.
`
`CV-90 (10/08)
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`CIVIL MINUTES - GENERAL
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`Page 8 of 8
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