`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`X.COMMERCE, INC.,
`Plaintiff,
`
`v.
`
`EXPRESS MOBILE, INC.,
`Defendant.
`
`
`EXPRESS MOBILE, INC.,
`
` Plaintiff,
`
`v.
`
`ADOBE INC., et al.,
`
` Defendants.
`
`
`
`
`
`Case No. 17-cv-02605-RS
`
`
`ORDER GRANTING STAY AND
`DENYING MOTION TO
`CONSOLIDATE
`
`
`Case No. 20-cv-08297-RS
`
`
`ORDER DENYING MOTION TO
`CONSOLIDATE
`
`
`
`
`1. In Case No. 17-cv-02605-RS, declaratory relief plaintiff X.Commerce, Inc. seeks a stay
`of the action pending reexamination by the Patent and Trademark Office (“PTO”) of the two
`patents in suit. While it would be premature at this juncture to enter a stay expressly extending
`through final conclusion of those reexamination proceedings, a confluence of circumstances
`support a temporary stay, subject to reevaluation of the situation in six months. Even though the
`advanced stage of the litigation ordinarily might weigh against a stay, there is no undue prejudice
`to the patent holder in this instance, particularly where it remains uncertain when a jury trial could
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Northern District of California
`United States District Court
`
`Page 1 of 3
`
`GOOGLE EXHIBIT 1041
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`commence.
`
` Express Mobile has opposed a stay per se. Nevertheless, it has suggested in the alternative
`a “pause” of this action, to allow Case No. 20-cv-08297-RS (which it contends should be
`formally consolidated herewith) to “catch up.” Even though formal consolidation is not warranted,
`as discussed below, Express Mobile’s suggestion for such a “pause” further shows that this
`temporary stay is appropriate.
`
`Accordingly, Case No. 17-cv-02605-RS is hereby stayed through November 30, 2021.
`Two weeks prior to the expiration of the stay the parties shall file a joint status update setting out
`the status of the reexamination proceedings, and their respective positions on whether the stay
`should be extended, and if so, for how long. For administrative purposes, all pending motions in
`this action are deemed denied without prejudice. Once the stay is lifted, any or all of the motions
`may be renewed simply by re-noticing them, although to the extent events in the reexaminations,
`developments in the law, or other changed circumstances warrant supplemental briefing, the
`parties should meet and confer to propose appropriate scheduling.
`
`2. Pursuant to Civil Local Rule 7-1(b), the motion to consolidate Case No. 17-cv-02605-
`RS and Case No. 20-cv-08297-RS is suitable for disposition without oral argument and the
`hearing set for March 25, 2021 is vacated. Rule 42 of the Federal Rules of Civil Procedure permits
`but does not define “consolidation” of cases. Here, Express Mobile is not proposing the filing of a
`“consolidated complaint” or seeking any other relief that requires formal “consolidation” of the
`two actions. Both cases are already pending before the same judge and, as this order reflects, are
`subject to any appropriate case management procedures that serve judicial efficiency and the
`interests of justice. Accordingly, the motion to consolidate is denied, but the parties will be
`expected to continue cooperating to ensure the greatest efficiencies in how the two cases proceed.
`
`
`
`
`
`2
`
`
`CASE NO. 17-cv-02605-RS
`
`Northern District of California
`United States District Court
`
`Page 2 of 3
`
`
`
`
`
`IT IS SO ORDERED.
`
`Dated: March 5, 2021
`
`
`____ _________________________ ___ __________ _____________________
`______________________________________
`RICHARD SEEBORG
`RRRICHARD SEEBORG
`Chief United States District Judge
`Chief United States District Judge
`
`3
`
`
`CASE NO. 17-cv-02605-RS
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Northern District of California
`United States District Court
`
`Page 3 of 3
`
`