Case 2:16-cv-03714-GW-AGR Document 272 Filed 10/05/17 Page 1 of 3 Page ID #:11883
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES - GENERAL
`Date October 5, 2017
`Case No. CV 16-3714-GW (AGRx)
`The California Institute of Technology v. Broadcom Limited, et al.
`Title
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`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`Katie Thibodeaux
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`Todd M. Briggs
`James P. Dowd
`James R. Asperger
`Aaron Thompson
`Mark D. Selwyn
`DEFENDANTS’ RENEWED MOTION TO STAY PENDING INTER
`PARTES REVIEW [222]
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`PROCEEDINGS:
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`The Court’s Tentative Ruling is circulated and attached hereto. Court hears oral argument. For reasons
`stated on the record, Defendants’ Motion is TAKEN UNDER SUBMISSION. Court to issue ruling.
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`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Initials of Preparer
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`CALTECH EXHIBIT - 2003
`Samsung v. Caltech - IPR2023-00131
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`Case 2:16-cv-03714-GW-AGR Document 272 Filed 10/05/17 Page 2 of 3 Page ID #:11884
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`The California Institute of Technology v. Broadcom Limited et al.; Case No. 2:16-cv-03714-GW-(AGRx)
`Tentative Ruling on Renewed Motion to Stay the Case Pending Inter Partes Review
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`On May 26, 2016, Plaintiff The California Institute of Technology commenced this
`action for patent infringement against Defendants Broadcom Limited, Avago Technologies
`Limited, Broadcom Corporation, Apple Inc. (“Apple”), and Cypress Semiconductor. See Docket
`No. 1; First Amended Complaint (“FAC”), Docket No. 36. Plaintiff claims that Defendants
`infringe the following patents: (1) U.S. Patent No. 7,116,710 (“the ’710 Patent”); (2) U.S. Patent
`No. 7,421,032 (“the ’032 Patent”); (3) U.S. Patent No. 7,916,781 (“the ’781 Patent”); and (4)
`U.S. Patent No. 8,284,833 (“the ’833 Patent”) (collectively, the “Asserted Patents”). See FAC ¶¶
`2–4. Defendants have raised several defenses, including invalidity and non-infringement of the
`Asserted Patents. See generally Docket Nos. 47, 60.
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`In February 2017, Defendants moved to stay this action pending resolution of inter partes
`review (“IPR”) petitions filed by Apple with the Patent Trial and Appeal Board (“PTAB”). The
`Court denied Defendants’ motion without prejudice in March 2017. Docket No. 118.
`Meanwhile, litigation in this case proceeded forward. As of the date of this Order, over 100 new
`entries have been added to the docket. These include numerous discovery disputes as well as
`briefing, hearings, and orders on claim construction and summary judgment. For example, the
`Court heard Defendants’ Motion to Dismiss for Summary Judgment under § 101 (Docket 171)
`and Defendants’ Motion to Disqualify Plaintiff’s Expert (Docket No. 171, 185) in April and May
`2017. The Court also held a Claim Construction Tutorial Hearing with the parties on June 15,
`2017 (Docket No. 198) followed by a Markman Hearing on June 29, 2017 (Docket No. 207).
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`Between June 30, 2017 and September 14, 2017, the PTAB granted Apple’s IPR petitions
`as to some of the asserted claims in three of the four asserted patents. See IPR 2017-00219, Paper
`17; PTAB No. IPR 2017-00211, Paper 17; PTAB No. IPR 2017-00210, Paper 18; PTAB No.
`IPR 2017-00297, Paper 16; PTAB No. IPR 2017-00423, Paper 16; PTAB No. IPR2017-00700,
`Paper 14; PTAB No. IPR2017-00701, Paper 14; PTAB No. IPR2017-00728, Paper 14.
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`On August 28, 2017 Defendants filed a Renewed Motion to Stay the Case Pending IPR.
`See Renewed Motion to Stay (“Renewed Motion”), Docket No. 222; see also Defs.’ Mem. in
`Supp. of the Motion (“Memo”), Docket No. 222-1. After Defendants had filed their Renewed
`Motion, the PTAB denied institution of all claims of the ’833 Patent. See IPR 2017-00702; IPR
`No. 2017-00703.
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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 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
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`Case 2:16-cv-03714-GW-AGR Document 272 Filed 10/05/17 Page 3 of 3 Page ID #:11885
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`*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).
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`Although trial is not set until June 2018, the significant litigation activity that has already
`occurred in this case warrants against a stay. In addition, fact discovery is set to close on
`October 13, 2017 and the parties are quickly moving into the expert discovery stages. While
`“significant work, including expert discovery and summary judgment, remains . . . the stage of
`the case weighs against a stay.” Fontem Ventures, V.B. v. NJOY, Inc., CV 14-1645-GW-
`(MRWx), Docket No. 211, at *3 (C.D. Cal. June 29, 2015).
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`More importantly, 27 claims in this case, including all the asserted claims of the ’833
`Patent, are not subject to IPR proceedings. No matter the outcome of the IPR proceedings, a trial
`will still be necessary as to a significant number of the parties’ disputes. See Fontem Ventures,
`CV 14-1645-GW-(MRWx), Docket No. 211, at *5. Furthermore, as Plaintiff notes (and
`Defendants do not address on reply), at least one of the Defendants has not agreed to the full
`statutory estoppel provisions for the IPRs. Given the various competing factors, the Court finds
`this factor weighs slightly against a stay.
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`As to prejudice, most of Plaintiff’s arguments about prejudice relate to considerations
`that would be present in almost any case, such as the passage of time before the PTAB (and
`Federal Circuit) resolves the IPRs and general concerns about the diminishing “quality and
`quantity of evidence” due to that passage of time. Docket No. 232 at 12–14. However, the
`Court acknowledges Defendants’ statement that “several Broadcom employees have left the
`company recently due to organizational changes . . . [and] relevant witnesses for this case may
`no longer be available when the IPRs complete.” Id. at 13. Moreover, the parties have actively
`engaged in significant litigation disputes in this matter since Defendants filed their original
`Motion to Stay. This time and expense would lead to at least some prejudice to Plaintiff if a stay
`was granted. Overall, the Court finds this factor is at best neutral in the stay analysis.
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`While the prejudice factor is neutral at best, both the advanced stage of the proceedings
`and the simplification of the issues weigh against a stay. In considering the totality of the
`circumstances, including the significant entries on the docket in this case, the Court exercises its
`discretion in DENYING Defendants’ Renewed Motion for Stay.
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