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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ECOBEE, INC.,
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`v.
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`ECOFACTOR, INC.,
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`Plaintiff,
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`Defendant.
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`C.A. No. 21-323 (MN)
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`At Wilmington, this 21st day of September 2021,
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`ORDER
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`Defendant, EcoFactor, Inc. (“EcoFactor”) has moved to stay ecobee, Inc.’s (“ecobee”)
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`declaratory judgment action pending resolution of the current proceedings before the United States
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`International Trade Commission (“ITC”) involving the same parties, the same asserted patents, the
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`same accused products, and the same infringement and validity issues. (D.I. 13).
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`Although the requested stay is the result of an ITC proceeding, the mandatory stay of
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`28 U.S.C. § 1659 does not apply as the respondent in the ITC (i.e., ecobee) is not seeking a stay.
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`Thus, staying this case is subject to the Court’s discretion. Ethicon, Inc. v. Quigg, 842 F.2d 1422,
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`1426-27 (Fed. Cir 1988). In exercising this discretion, the Court must weigh the competing
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`interests of the parties and attempt to maintain an even balance. See Landis v. N. Am. Co., 299
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`U.S. 248, 255 (1936). The factors courts typically consider include: (1) whether a stay will
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`simplify the issues and trial of the case, (2) whether discovery is complete and a trial date has been
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`set, and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the
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`non-moving party. Novartis AG v. HEC Pharm Co., 183 F. Supp. 3d 560, 562 (D. Del. 2016).
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`Here, the factors, on balance, favor denying the motion to stay. Although the case is at its
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`relatively early stages and involves some overlapping issues with the ITC, there are also a number
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2005
`Page 1
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`
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`Case 1:21-cv-00323-MN Document 26 Filed 09/21/21 Page 2 of 2 PageID #: 1669
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`of different issues between the two actions. For example, ecobee’s declaratory judgment action is
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`not limited to the products accused of infringement in the ITC action. In addition, this action
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`involves questions of damages that are not present in the ITC, and the ITC action involves
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`questions of “domestic industry” and remedies that are inapplicable here. Moreover, given the
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`pace at which the ITC proceedings will likely move, it seems that many of the benefits from having
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`the ITC record that EcoFactor relies on will be achieved even absent a stay. Thus, it is unclear
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`that the stay will substantially simplify this case.
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`Moreover, the Court agrees with ecobee, that the factors should be viewed in context. Here,
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`EcoFactor has commenced approximately two dozen patent infringement proceedings in numerous
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`venues, and as of the time of this motion was litigating at least three other matters (i.e., the ITC
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`action and two Western District of Texas matters) against ecobee in forums chosen by EcoFactor
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`– several of which apparently involve the same or related patents as the patents in this case. The
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`considerations of efficiency, duplication, undue burdens or overlapping issues were not issues for
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`EcoFactor in connection with those actions. And EcoFactor’s willingness to engage in multiple
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`somewhat related proceedings in different venues casts significant doubt on any assertions of
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`prejudice.
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`In light of the above, IT IS HEREBY ORDERED that EcoFactor’s motion to stay is
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`DENIED.
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`IT IS FURTHER ORDERED that, on or before October 5, 2021, the parties shall submit a
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`revised proposed Scheduling Order.
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`The Honorable Maryellen Noreika
`United States District Judge
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`2
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2005
`Page 2
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