Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 1 of 17
`
`Betty H. Chen (CA SBN 290588); bchen@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 400
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
`Seth M. Sproul (CA SBN 217711); sproul@fr.com
`Jeffrey H. Burton (CA SBN 328305); burton@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070
`Facsimile: (858) 678-5099
`
`Benjamin C. Elacqua (Pro Hac Vice forthcoming); elacqua@fr.com
`Tony Nguyen (Pro Hac Vice forthcoming); nguyen@fr.com
`Kathryn Quisenberry (admitted Pro Hac Vice); quisenberry@fr.com
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, TX 90067
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`
`Joy B. Kete (admitted Pro Hac Vice); kete@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
`
`Attorneys for Defendant,
`APPLE INC.
`
`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`(SAN JOSE DIVISION)
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`CPC PATENT TECHNOLOGIES PTY LTD.,
`
`Case No. 5:22-cv-02553-EJD-NC
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`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
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`DEFENDANT APPLE INC.’S NOTICE OF
`MOTION AND MOTION TO STAY
`PENDING INTER PARTES REVIEW
`
`Date: November 10, 2022
`Time: 9:00 a.m.
`Courtroom: 4
`Judge: Hon. Edward J. Davila
`
`APPLE INC.’S MOTION TO STAY
`Case No. 5:22-cv-02553-EJD-NC
`
`CPC EXHIBIT 2006
`Apple Inc. v. CPC Patent Technologies PTY Ltd.
`IPR2022-00602
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`Page 1 of 256
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`

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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 2 of 17
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`
`
`
`
`I.
`
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................ 1
`
`BACKGROUND .............................................................................................................. 2
`
`A.
`
`B.
`
`Status of the IPRs .................................................................................................. 2
`
`Procedural Posture ................................................................................................ 2
`
`III.
`
`LEGAL STANDARD ....................................................................................................... 3
`
`IV.
`
`ARGUMENT .................................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
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`A Stay Is Appropriate Because Discovery Is in Its Early Stages
`and No Trial Date Has Been Set ........................................................................... 4
`
`The Patent Office Proceedings Will Simplify The Issues ..................................... 6
`
`CPC Will Suffer No Undue Prejudice or Tactical Disadvantage
`From A Stay .......................................................................................................... 9
`
`CPC’s Motion for Summary Judgment Does Not Weight Against
`a Stay ................................................................................................................... 11
`
`V.
`
`CONCLUSION ............................................................................................................... 12
`
`
`
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 3 of 17
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Advanced Micro Devices, Inc. v. LG Elecs., Inc.,
`No. 14-CV-01012-SI, 2015 WL 545534 (N.D. Cal. Feb. 9, 2015)......................................... 10
`
`Anza Tech., Inc. v. Toshiba Am. Elec. Components Inc.,
`No. 17-CV-07289-LHK, 2018 WL 4859167 (N.D. Cal. Sept. 28, 2018) ................................. 7
`
`Anza Technology v. Xilinx, Inc.,
`No. 5:17-cv-06302-LHK, Dkt. No. 65 (N.D. Cal. Feb. 7, 2018) .............................................. 5
`
`Clinton v. Jones,
`520 U.S. 681 (1997) .................................................................................................................. 3
`
`Cypress Semiconductor Corp. v. LG Elecs., Inc.,
`No. 13-cv-04034-SBA, 2014 WL 5477795 (N.D. Cal. Oct. 29, 2014) .................................... 9
`
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`No. 14-cv-05330-HSG, 2015 WL 1967878 (N.D. Cal. May 1, 2015) ................................... 10
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988) ................................................................................................. 3
`
`Evolutionary Intel. LLC v. Yelp Inc,
`No. C-13-03587 DMR, 2013 WL 6672451 (N.D. Cal. Dec. 18, 2013) .................................... 7
`
`Finjan, Inc. v. Symantec Corp.,
`139 F.Supp.3d 1032 (N.D. Cal. 2015) ............................................................................. passim
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013) ................................................................................................. 8
`
`IXI Mobile (R & D) Ltd. v. Samsung Elecs. Co Ltd,
`No. 15-CV-03752-HSG, 2015 WL 7015415 (N.D. Cal. Nov. 12, 2015) ............................... 10
`
`Landis v. N. Amer. Co.,
`299 U.S. 248 (1936) .................................................................................................................. 3
`
`Nichia Corp. v. Vizio, Inc.,
`SACV 18-00362 AG (KESx), 2018 WL 2448098 (C.D. Cal. May 21, 2018) ......................... 8
`
`PersonalWeb Techs., LLC v. Facebook, Inc.,
`No. 5:13-CV-01356-EJD, 2014 WL 116340 (N.D. Cal. Jan. 13, 2014) .......................... passim
`
`PersonalWeb Techs, LLC v. Apple Inc.,
`69 F. Supp. 3d 1022 (N.D. Cal. 2014) ................................................................................ 4, 10
`ii
`APPLE INC.’S MOTION TO STAY
`Case No. 5:22-cv-02553-EJD-NC
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 4 of 17
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`
`
`
`Pragmatus AV, LLC v. Facebook, Inc.,
`No. 11-cv-02168-EJD, 2011 WL 4802958 (N.D. Cal. Oct. 11, 2011) ..................................... 3
`
`Regents of Univ. of Minnesota v. LSI Corp.,
`No. 5:18-CV-00821-EJD, 2018 WL 2183274 (N.D. Cal. May 11, 2018) ............................ 4, 7
`
`Tire Hanger Corp. v. My Car Guy Concierge Servs. Inc.,
`No. 5:14-cv-00549-ODW, 2015 WL 857888 (C.D. Cal. Feb. 27, 2015) ................................. 8
`
`Twilio, Inc. v. TeleSign Corp.,
`No. 16-CV-06925-LHK, 2018 WL 1609630 (N.D. Cal. Apr. 3, 2018) .................................. 10
`
`Viavi Sols. Inc. v. Platinum Optics Tech. Inc.,
`No. 5:20-CV-05501-EJD, 2021 WL 1893142 (N.D. Cal. May 11, 2021) ....................... passim
`
`Walters v. Alameida,
` No. C-04-0818-RMW, 2008 WL 786851 (N.D. Cal. Mar. 20, 2008) ................................... 11
`
`Statutes
`
`35 U.S.C. § 316(a)(11) .............................................................................................................. 2, 10
`
`35 U.S.C. § 314(b) .......................................................................................................................... 2
`
`35 U.S.C. § 315(e)(2) ...................................................................................................................... 9
`
`
`
`
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`
`
`iii
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 5 of 17
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`NOTICE OF MOTION AND MOTION
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`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
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`PLEASE TAKE NOTICE that on November 10, 2022 at 9:00 a.m., or as soon thereafter as
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`the matter may be heard, in the courtroom of the Honorable Edward J. Davila located in the United
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`States District Court for the Northern District of California, San Jose Courthouse, Courtroom 4, 5th
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`Floor, 280 South First Street, San Jose, CA 95113, Apple will and hereby does move for an order
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`staying all proceedings in this action pending final resolution of the pending inter partes review
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`(“IPR”) proceedings relating to U.S. Patent Nos. 9,665,705 (“‘705 Patent”) and 8,620,039 (“’039
`
`Patent”) (collectively, the “Asserted Patents”) before the Patent Trial and Appeal Board, including
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`any appeals therefrom. Apple has filed, concurrently herewith, an Administrative Motion to Shorten
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`Time for Hearing of this Motion.
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`As set forth in the accompanying Memorandum of Points and Authorities, all factors weigh
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`in favor of a stay – the case is still at an early stage, the two IPR petitions will likely significantly
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`simplify or moot many issues before this Court, and a stay will not prejudice Plaintiff CPC Patent
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`Technologies PTY Ltd. (“CPC”).
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`This Motion is based on this Notice, the accompanying Memorandum of Points and
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`Authorities, the Declaration of Seth M. Sproul, and supporting documents, on such matters as may
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`be judicially noticed, on any oral argument the Court may hear, and on such other and further
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`information as the Court may consider.
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`Counsel for Apple has conferred with counsel for CPC with respect to the subject of this
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`Motion. CPC opposes the relief sought by this Motion.
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`
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 6 of 17
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
`
`INTRODUCTION
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`This is an early-stage patent infringement case in which Apple has challenged all of the
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`asserted claims by petitioning the Patent Trial and Appeal Board to institute inter partes review
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`relating to the Asserted Patents in this case, U.S. Patent Nos. 9,665,705 and 8,620,039.1 To avoid
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`unnecessary or duplicative effort, this case should be stayed pending the PTAB’s issuance of final
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`written decisions on the IPR petitions filed by Apple and the final resolution of any appeals.
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`A stay now is the prudent, efficient course for managing this case. Each of the three relevant
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`factors weighs in favor of a stay. First, this litigation is still in its early stages. The case was recently
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`transferred from another district where the case was mid-stream: There is no schedule in place, fact
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`discovery is not complete, no depositions as part of fact discovery have been taken, expert discovery
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`has not begun, and a trial date has not been set. Although claim construction is complete, a
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`substantial amount of work remains before the case is ready for trial. Second, a stay could
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`dramatically simplify the issues in question because all asserted claims of the Asserted Patents are
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`being challenged through IPRs. If the PTAB cancels these claims, this case is moot. Even if some
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`of the asserted claims survive IPRs, a final determination from the PTAB would narrow the claims
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`CPC could assert, the invalidity arguments that Apple could raise, or both. Third, CPC will not
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`suffer any prejudice or tactical disadvantage as the result of a stay. CPC is a non-practicing entity
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`that does not make or sell any products covered by the Asserted Patents. Nor does CPC compete
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`with Apple. Any conceivable harm CPC may suffer from a stay can be remedied with monetary
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`damages.
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`Accordingly, all three factors strongly favor staying this case pending IPRs.
`
`
`1 The ’705 Patent is being challenged in IPR 2022-00602, filed February 23, 2022. Sproul Decl.
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`Ex. B. The ’039 Patent is being challenged in IPR 2022-00600, filed on February 23, 2022. Sproul
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`Decl. Ex. C.
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`1
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 7 of 17
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`II.
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`BACKGROUND
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`On February 23, 2021, Plaintiff CPC Patent Technologies PTY Ltd. (“CPC”) filed a
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`complaint in the United States District Court for the Western District of Texas, before Judge Alan
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`Albright, asserting the following patents against Apple: U.S. Patent Nos. 9,665,705 (“’705 patent”),
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`8,620,039 (“’039 patent”), and 9,269,208 (“’208 patent”). ECF 1. CPC alleged that certain Apple
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`products equipped with Touch ID and Face ID, along with Apple Card loaded into Apple Wallet,
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`infringed these three patents. See id. From February 15, through March 16, 2022, CPC withdrew
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`all claims in the ’208 patent, withdrew all but one claim in the ’039 patent, and withdrew all but six
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`claims in the ’705 patent, thus narrowing the case. See ECF 80; see also Sproul Decl. Ex. A (George
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`Summerfield 3/16/22 Email). As a result, only the ’705 and ’039 Patents remain in the case.
`
`A.
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`Status of the IPRs
`
`On February 23, 2022, Apple filed IPRs on all originally asserted claims. Sproul Decl. Ex.
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`B, IPR 2022-00602, Paper No. 1 (’705 Patent Petition); Ex. C, IPR 2022-00600, Paper No. 1 (’039
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`Patent Petition). CPC’s preliminary responses, if it chooses to file them, are due between June and
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`July 2022. 37 CFR § 42.107. The PTAB’s institution decisions on IPRs related to both Asserted
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`Patents are due between September and October 2022. See 35 U.S.C. § 314(b); 37 CFR § 42.107.
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`If instituted, the PTAB’s final written decisions will be due no later than a year after the date of
`
`institution, i.e., between September and October 2023. See 35 U.S.C. § 316(a)(11).
`
`B.
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`Procedural Posture
`
`On May 4, 2021, Apple filed a Motion to Transfer venue to the Northern District of
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`California. ECF 22. Judge Albright denied Apple’s Motion to Transfer on February 8, 2022. ECF
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`74. On February 10, 2022, a Markman hearing was held and Judge Albright construed terms of the
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`Asserted Patents. ECF 76. On March 9, 2022, Apple submitted a petition for a writ of mandamus
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`directing the United States District Court for the Western District of Texas to transfer this case to
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`the United States District Court for the Northern District of California. See ECF 83. On April 6,
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`2022, with sixteen weeks of fact discovery remaining, CPC filed a Motion for Partial Summary
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`Judgment of infringement of claim 1 of the ’705 Patent. ECF 86. On April 13, 2022, Apple filed a
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`
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`2
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 8 of 17
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`
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`notice of unopposed extension of deadline to file a response to CPC’s Motion for Partial Summary
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`Judgment on May 4, 2022. ECF 90. On April 22, 2022, the Federal Circuit granted Apple’s
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`mandamus petition and directed transfer to the Northern District of California. ECF 92. On May
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`6, 2022, CPC filed a notice of CPC’s Motion for Partial Summary Judgment with a hearing date of
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`November 17, 2022. ECF 113.
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`Although the Initial Case Management Conference has been set for August 11, 2022, no
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`schedule has been entered, and no deadlines have been set for fact discovery, expert discovery, or
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`trial. See ECF 111. CPC has not served updated infringement contentions to conform with this
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`Court’s Patent Local Rules. With the exception of depositions on venue issues, no depositions have
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`been taken.
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`III. LEGAL STANDARD
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`A court’s “power to stay proceedings is incidental to the power inherent in every court to
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`control the disposition of the causes on its docket with economy of time and effort for itself, for
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`counsel, and for the litigants.” Landis v. N. Amer. Co., 299 U.S. 248, 254-55 (1936); see also Clinton
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`v. Jones, 520 U.S. 681, 706 (1997) (“The District Court has broad discretion to stay proceedings as
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`an incident to its power to control its own docket.”). District courts have ample “authority to order
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`a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-
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`27 (Fed. Cir. 1988) (citing Landis, 299 U.S. at 254).
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`In this district, there is a “liberal policy in favor of granting motions to stay proceedings
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`pending the outcome of USPTO reexamination or reissuance proceedings.” PersonalWeb Techs.,
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`LLC v. Facebook, Inc., No. 5:13-CV-01356-EJD, 2014 WL 116340, at *3 (N.D. Cal. Jan. 13, 2014)
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`(internal citations omitted); see also Pragmatus AV, LLC v. Facebook, Inc., No. 11-cv-02168-EJD,
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`2011 WL 4802958 at *2 (N.D. Cal. Oct. 11, 2011). This Court has stayed actions even when IPRs
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`have not yet been instituted. Viavi Sols. Inc. v. Platinum Optics Tech. Inc., No. 5:20-CV-05501-
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`EJD, 2021 WL 1893142, at *1 (N.D. Cal. May 11, 2021) (“a stay pending the PTAB's decision on
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`whether to institute IPR petitions will promote efficiency by avoiding the expenditure of limited
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`judicial resources between now and when the last PTAB institution decision will be rendered”); see
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`3
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 9 of 17
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`also Finjan, Inc. v. Symantec Corp., 139 F.Supp.3d 1032, 1037 (N.D. Cal. 2015) (“Were the Court
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`to deny the stay until a decision on institution is made, the parties and the Court would expend
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`significant resources on issues that could eventually be mooted by the IPR decision”); Regents of
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`Univ. of Minnesota v. LSI Corp., No. 5:18-CV-00821-EJD, 2018 WL 2183274, at *4 (N.D. Cal.
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`May 11, 2018).
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`The Court should “examine three factors when determining whether to stay a patent
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`infringement case pending review or reexamination of the patents: (1) whether discovery is complete
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`and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial
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`of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage
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`to the nonmoving party.” PersonalWeb Techs, LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1025 (N.D.
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`Cal. 2014) (citations and quotations omitted); see also Viavi, 2021 WL 1893142 at *1.
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`IV. ARGUMENT
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`The Court should stay this action pending IPRs because all three factors weigh in Apple’s
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`favor. First, this litigation is still in its early stages: the case was recently transferred from another
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`district, there is no schedule in place, fact discovery is not complete, expert discovery has not begun,
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`a trial date has not been set, and there is a substantial amount of work remaining before the case is
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`ready for trial. Second, a stay could dramatically simplify the issues in question because all asserted
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`claims of the Asserted Patents are being challenged in the IPR petitions. Third, CPC will not suffer
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`any prejudice or tactical disadvantage as the result of a stay. CPC is a non-practicing entity that
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`does not compete with Apple and that does not make or sell any products covered by the Asserted
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`Patents.
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`A.
`
`A Stay Is Appropriate Because Discovery Is in Its Early Stages and No Trial
`Date Has Been Set
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`The early stage of litigation strongly favors a stay. This factor concerns whether the bulk of
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`the work in the case lies ahead or in the past. See, e.g., Viavi, 2021 WL 1893142, at *1 (“There is
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`substantial work remaining before the case is ready for trial.”); see also PersonalWeb Techs., LLC
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`v. Facebook, Inc., 2014 WL 116340, at *3 (finding this factor weighs in favor of a stay where “a
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`claim construction order has been issued and the close of fact discovery is fast approaching” but “a
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`4
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 10 of 17
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`substantial portion of the work—expert discovery, summary judgment, pre-trial preparation, and
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`trial itself—lies ahead.”). In particular, courts consider whether fact discovery is complete, expert
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`discovery has begun, depositions have taken place, a trial date has been set, and a substantial amount
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`of work remains before the case is ready for trial. See Viavi, 2021 WL 1893142, at *1 (“Here, all
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`of the factors above favor staying this case. First, fact discovery is in its early stages, expert
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`discovery has not begun, and a trial date has not been set.”); see also Finjan, 139 F. Supp. 3d at
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`1034 (“While the parties have engaged in some written discovery and document production, no
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`depositions have been taken and no deadlines associated with expert discovery, summary judgment,
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`pre-trial motions, and trial have been set.”).
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`This case is in its early stages and there is a substantial amount of work remaining before
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`the case is ready for trial. Thus, this factor weighs in favor of granting a stay. Fact discovery is far
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`from complete. Except for three short depositions solely on venue issues, neither party has taken
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`any depositions. Although the parties have begun producing documents and exchanging written
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`discovery, the parties have only engaged in limited discovery and the resources spent on that work
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`are a fraction of what would be required for the still-to-come depositions and expert discovery.
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`Transfer to this district introduces additional procedural requirements that tip this factor
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`further in favor of a stay. The parties exchanged initial infringement and invalidity contentions
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`while the case was in Texas. See ECF 37. However, the parties will need to provide amended or
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`updated contentions to comply with the requirements of the Patent Local Rules in this district, and
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`will also need to complete the corresponding document productions associated with those deadlines.
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`See Anza Technology v. Xilinx, Inc., No. 5:17-cv-06302-LHK, Dkt. No. 65 at 2-3, 71 (N.D. Cal.
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`Feb. 7, 2018) (granting a stay in a case where, as here, infringement and invalidity contentions were
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`exchanged in accordance with a transferor court’s patent rules prior to transfer).
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`This factor also weighs in favor of a stay because there has not yet been any expert discovery,
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`and there is no schedule in place for expert discovery, dispositive motions, or trial. None of these
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`dates will be set until the Initial Case Management Conference, which is scheduled to occur on
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`August 11, 2022. Until that date, it is unlikely that the Court will have expended any resources on
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`5
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`APPLE INC.’S MOTION TO STAY
`Case No. 5:22-cv-02553-EJD-NC
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 11 of 17
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`this case, further strengthening the efficiencies that a stay would provide. Thus, the Court has yet
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`to expend significant resources on this case, and a stay will not disrupt any pre-existing case
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`management plan.
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`Courts in this district have stayed cases that are much further along than this one. For
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`example, in PersonalWeb Techs., LLC v. Facebook, Inc., the court granted a stay pending IPRs even
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`after “[t]he parties and courts ha[d] already invested significant time and effort into these matters”
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`in that “a claim construction order ha[d] been issued and the close of fact discovery [was] fast
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`approaching.” 2014 WL 116340 at *3. Even though just over a week of fact discovery remained
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`when the stay was granted, the court reasoned that “a substantial portion of the work—expert
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`discovery, summary judgment, pre-trial preparation, and trial itself—l[ay] ahead.” Id. Thus, the
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`court concluded, the stage-of-case factor weighed “slightly in favor of a stay.” Id. at *4. This case
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`is less advanced than PersonalWeb Techs., LLC v. Facebook, Inc.
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`The stage of the case here thus strongly favors granting a stay pending IPRs because the bulk
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`of the work lies ahead. See Viavi, 2021 WL 1893142, at *1 (“There is substantial work remaining
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`before the case is ready for trial.”). There is no schedule in place, fact discovery is not complete,
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`no depositions as part of fact discovery have been taken, expert discovery has not begun, and a trial
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`date has not been set. The Court has yet to expend significant resources on this case so a stay will
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`not disrupt any pre-existing case management plan. Indeed, fact discovery is effectively stayed, and
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`substantial work remains before this case is ready for trial. This factor strongly favors a stay.
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`B.
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`The Patent Office Proceedings Will Simplify The Issues
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`The second factor – simplification of issues and conservation of judicial and party resources
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`– likewise weighs in favor of a stay. Courts in this district have recognized the significant efficiency
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`that can result from an early stay even where the PTAB has not yet instituted its review. Viavi, 2021
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`WL 1893142 at *1 (“a stay pending the PTAB's decision on whether to institute IPR petitions will
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`promote efficiency”). Indeed, this district has a liberal policy of granting stays pending
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`reexamination in the interest of judicial economy, which has frequently led to pre-institution stays.
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`See, e.g., PersonalWeb Techs., LLC v. Facebook, Inc., 2014 WL 116340, at *3 (finding there is a
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`6
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 12 of 17
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`“liberal policy in favor of granting motions to stay proceedings pending the outcome of USPTO
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`reexamination or reissuance proceedings.”); Finjan, 139 F.Supp.3d at 1037 (N.D. Cal. 2015)
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`(“Accordingly, the Court finds that staying the case pending the PTO's decision whether to institute
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`IPR is the most efficient use of resources at this juncture.”); Regents of Univ. of Minnesota, 2018
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`WL 2183274, at *4 (entering pre-institution stay); Evolutionary Intel., 2013 WL 6672451, at *7
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`(finding that this district’s liberal policy favoring stays pending reexamination warrants a stay even
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`if the Patent Office is still considering whether to grant a party’s reexamination request); Anza Tech.,
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`2018 WL 4859167, at *2 (“Therefore, staying the case pending the resolution of the petitions and
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`the IPRs, if instituted, could simplify the case because the PTAB could cancel or amend some or all
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`of the asserted claims.”). In Viavi, this Court found that “a stay pending the PTAB’s decision on
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`whether to institute IPR petitions will promote efficiency by avoiding the expenditure of limited
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`judicial resources between now and when the last PTAB institution decision will be rendered.” 2021
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`WL 1893142, at *1.
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`The same efficiencies will be found here if a pre-institution stay is granted. A stay pending
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`the PTAB’s decision on whether to institute Apple’s IPR petitions will enhance efficiency by
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`potentially avoiding the expenditure of judicial resources between now and when the PTAB
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`institution decision will be rendered. Evolutionary Intel. LLC v. Yelp Inc, No. C-13-03587 DMR,
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`2013 WL 6672451, at *7 (N.D. Cal. Dec. 18, 2013). For that reason, “it is not uncommon for courts
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`to grant stays pending reexamination prior to the PTO deciding to reexamine the patent,” and this
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`court has consistently granted stays prior to IPR institution decisions. Anza Tech., Inc. v. Toshiba
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`Am. Elec. Components Inc., No. 17-CV-07289-LHK, 2018 WL 4859167, at *2 (N.D. Cal. Sept. 28,
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`2018). Due to the schedule being vacated upon transfer, this case is effectively stayed pending the
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`case management conference currently set for August 11, 2022. Entering a stay at this time would
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`confer minimal, if any, burden on CPC as institution decisions are anticipated starting in September
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`2022. Further efficiencies will be found if the PTAB cancels all claims at issue because there will
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`be no need for the Court to consider any issue relating to the Asserted Patents. Even if only some
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`of the asserted claims are cancelled, the IPR process will “simplify the issues and streamline the
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`7
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`APPLE INC.’S MOTION TO STAY
`Case No. 5:22-cv-02553-EJD-NC
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 13 of 17
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`litigation by reducing claim construction disputes and minimizing the number of claims that the
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`parties need to address.” Tire Hanger Corp. v. My Car Guy Concierge Servs. Inc., No. 5:14-cv-
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`00549-ODW, 2015 WL 857888, at *2 (C.D. Cal. Feb. 27, 2015).
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`Here, there is a strong likelihood that the PTAB will institute the IPRs based on the
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`substantial evidence presented in Apple’s petitions. Apple’s IPR petitions challenge each of CPC’s
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`asserted claims and establish that those claims are not patentable in light of the prior art. A case is
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`rendered moot if the PTAB finds that the challenged claims are not patentable. See Fresenius USA,
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`Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013) (“when a claim is cancelled, the
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`patentee loses any cause of action based on that claim, and any pending litigation in which the claims
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`are asserted becomes moot”). Thus, this entire action will be rendered moot if the PTAB cancels
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`all the claims, and even if the PTAB cancels a portion of the claims, the scope of the litigation will
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`be significantly reduced. See Nichia Corp. v. Vizio, Inc., SACV 18-00362 AG (KESx), 2018 WL
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`2448098, at *2 (C.D. Cal. May 21, 2018) (“If the PTAB cancels all of the asserted claims, this action
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`will be rendered moot. If the PTAB cancels or narrows a portion of the asserted claims, the scope
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`of this litigation may be significantly reduced.”).
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`Statistics from the PTAB provide further proof that IPRs are likely to dispose of or narrow
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`this case. According to PTAB statistics, in 2021, the PTAB instituted review for sixty-six percent
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`(66%) of patents on which IPRs were filed. Sproul Decl., Ex. D (March 2022 PTAB Statistics).
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`Additionally, for the period from October 1, 2021, to March 31, 2022, the PTAB instituted review
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`for sixty-two percent (62%) of IPR petitions when the challenged technology related to electrical or
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`computer-based technology. Id. Also, for the period from October 1, 2021, to March 31, 2022, IPR
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`petitions that reached final written decision resulted in the cancellation of at least some instituted
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`claims in eighty-five percent (85%) of cases, and resulted in cancellation of all instituted claims in
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`sixty-seven percent (67%) of cases. Id. Apple’s success rate in challenging patents through IPRs
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`has been even higher. See Sproul Decl., Ex. E [Lex Machina Statistics] (eighty-six percent (86%)
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`of Apple-filed IPRs resulting in final determination result in cancellation of some claims, and
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`8
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`APPLE INC.’S MOTION TO STAY
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`Case 5:22-cv-02553-EJD Document 119 Filed 06/14/22 Page 14 of 17
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`seventy percent (70%) result in cancellation of all instituted claims). Thus, PTAB statistics further
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`demonstrate that IPR petitions are virtually certain to narrow the issues in this case.
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`The prospect of simplification, however, does not depend on Apple’s prevailing on all, or
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`even any, claims in the IPR due to estoppel. If the IPR is instituted and proceeds to a final written
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`decision, Apple will be estopped from re-arguing invalidity to the jury based on grounds that were
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`“raised or that reasonably could have been raised during [the] inter partes review.” 35 U.S.C. §
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`315(e)(2); see also Sproul Decl. Ex. B at 57; Sproul Decl. Ex. C at 52. Further, the fact that the
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`PTAB had upheld certain claims would “assist in streamlining the presentation of evidence and
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`benefit the trier of fact by providing the expert opinion of the PTO.” PersonalWeb Techs., LLC v.
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`Facebook, Inc, 2014 WL 116340, at *4. Under this scenario, there would be fewer prior art grounds
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`that could be raised, and the Court would benefit from the PTAB’s analysis and any potential
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`disclaimers made by CPC in the IPR proceedings. See Finjan, 139 F. Supp. 3