John P. Schnurer, Bar No. 185725
`JSchnurer@perkinscoie.com
`John D. Esterhay, Bar No. 282330
`JEsterhay@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, California 92130-2080
`Telephone: 858.720.5700
`Facsimile: 858.720.5799
`
`Attorneys for Plaintiff
`Shenzhen Gooloo E-Commerce Co., Ltd.
`
`Alex W. Ruge, (Pro Hac Vice)
`aruge@sheridanross.com
`Robert R. Brunelli (Pro Hac Vic)
`RBrunelli@sheridanross.com
`Aaron P. Bradford (Pro Hac Vice)
`ABradforddford@sheridanross.com
`SHERIDAN ROSS P.C.
`1560 Broadway, Suite 1200
`Denver, CO 80202
`Telephone: (303) 863-9700
`Facsimile: (303) 863-0223
`
`sao@paynefears.com
`PAYNE & FEARS LLP
`4 Park Plaza, Suite 1100
`Irvine, California 92614
`Telephone: (949) 851-1100
`Facsimile: (949) 851-1212
`
`Attorneys for Defendant
`Pilot, Inc.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`Shenzhen Gooloo E-Commerce Co.,
`Ltd.,
`
`Plaintiff,
`
`v.
`
`PILOT, INC.,
`
`Defendant.
`
`Case No. 22-cv-02219-RGK-E
`
`RENEWED JOINT STIPULATION
`TO STAY CASE PENDING
`RESOLUTION OF INTER PARTES
`REVIEWS OF 653 PATENT
`
`Judge:
`Magistrate:
`
`Hon. R. Gary Klausner
`Hon. Charles F. Eick
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`

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`Pursuant to Local Rules 7-1 and 15, Plaintiff Shenzhen Gooloo E-Commerce
`
`Gooloo
`
`Pilot
`
`follows:
`
`1.
`
`The parties previously filed a joint stipulation requesting that the Court
`
`grant the same relief herein requested on December 28, 2022. (ECF No. 90).
`
`2.
`
`On January 3, 2023, the Court denied the requested stay as premature
`
`stating:
`
`The Court deems the stipulation premature because the Patent Trial
`
`and Appeal Board's ("PTAB") decision on one of the IPRs, PTAB
`
`Case No. IPR2021-01232, is imminent. (See id. at 2.) The result of that
`
`ruling, along with any involved party's decision to appeal the ruling to
`
`the Federal Circuit, may inform the Court's decision regarding a stay.
`
`Accordingly, the Stipulation is DENIED without prejudice. The
`
`patties may file a renewed stipulation once the PT AB rnles on the
`
`outstanding IPR and any appeal has been filed.
`
`(ECF No. 93).
`
`3.
`
`The actions identified by the Court have now occurred, and the Parties
`
`therefore present this renewed joint stipulation.
`
`4.
`
`The Parties are currently engaged in discovery. Fact discovery is
`
`scheduled to close on February 10, 2023.
`
`5.
`
`of non-infringement claims 1-
`
`-115);
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`declaratory judgment of invalidity of claims 7-
`
`U.S.C. § 102 (Id. ¶¶ 116-125); declaratory judgment of invalidity of claims 1 and 3-
`
`Id. ¶¶ 126-137); declaratory judgment
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`lack of written description (Id. ¶¶ 138-159); and declaratory judgment of invalidity
`
`of claims 1-
`
`(Id. ¶¶ 160-169).
`
`§ 112(a) for lack of enablement
`
`6.
`
`
`
`Nearly all of the claims at issue in these five counts have been found Nearly all of the claims at issue in these five counts have been found
`
`
`
`invalid by the United States Patent and Trademark Office Patent Trial and Appeal invalid by the United States Patent and Trademark Office Patent Trial and Appeal
`
`
`
`. These decisions are on appeal before the United States Court of .
`
`Appeals for the Federal Circuit.
`
`7.
`
`On April 7, 2021, non-party The NOCO
`
`NOCO
`
`filed a Petition for Inter Partes Review of U.S. Patent No. 10,046,653 before the
`
`PTAB challenging nearly every claim of the 653 Patent at issue in this litigation,
`
`docketed as PTAB Case No. IPR2021-00777. On October 5, 2021, the PTAB
`
`instituted inter partes review of the challenged claims
`
`. On October
`
`3, 2022, the PTAB held in a final written decision that all but one of the challenged
`
`claims were unpatentable (i.e. invalid). On December 5, 2022, Pilot filed a notice
`
`of appeal to the United States Court of Appeals for the Federal Circuit. That appeal
`
`is pending as U.S. Federal Circuit Case No. 23-1234.
`
`8.
`
`On July 16, 2021, non-party Shenzhen Chic Electronics Co., Ltd.,
`
`Shenzhen
`
`Inter Partes Review of U.S. Patent No.
`
`10,046,653 before the PTAB challenging all but one claim of the 653 Patent,
`
`docketed as PTAB Case No. IPR2021-01232. This Petition for Inter Partes Review
`
`encompassed additional claims not challenged in the NOCO IPR. On January 14,
`
`2022, the PTAB instituted inter partes review of the challenged claims
`
`. On October 12, 2022, the PTAB heard oral argument. On January 9,
`
`2023, the PTAB again held in a final written decision that all but one of the
`
`challenged claims were unpatentable (i.e. invalid). On January 10, 2023, Pilot filed
`
`a notice of appeal to the United States Court of Appeals for the Federal Circuit.
`
`That appeal is pending but has not yet been given a case number.
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`9.
`
`The final written decisions in the two IPRs each hold all challenged
`
`claims invalid with the sole exception of Claim 3 of the
`
`. Claim 3 is
`
`subject to a claim construction by the PTAB that is disputed on appeal.
`
`10.
`
`The parties agree that there is good cause for a stay of this action
`
`pending the conclusion of the Federal Circuit appeals of NOCO
`
`23-1234 as well as of Shenzhen
`
`IPR2021-01232. Gooloo is
`
`asserting claims for a declaratory judgment of invalidity of the 653 patent, and
`
`such claims will be materially impacted
`
`and perhaps even rendered moot
`
`by any
`
`decision of the PTAB and/or Federal Circuit in the pending IPR proceedings and
`
`their appeals. Thus, allowing these proceedings to conclude before further litigating
`
`this case will both simplify this proceeding by resolving or substantially advancing
`
`issues in dispute, such as claim construction and invalidity of claims of the 653
`
`patent, as well as create judicial efficiency by postponing further activity until after
`
`the Federal Circuit has ruled on these issues. A stay may also prevent potentially
`
`inconsistent determinations of validity on the same claims of the 653 Patent. The
`
`parties expect that the stay will be in place approximately one year, as the Federal
`
`approximately 11 months.
`
`11.
`
`to its power to c
`
`Clinton v. Jones, 520 U.S. 681, 706 (1997).
`
`docket and the fairest course for the parties to enter a stay of an action before it,
`
`pending resolutio
`
`Leyva v.
`
`Certified Grocers of California, Ltd., 593 F.2d 857, 863 (9th Cir. 1979). In such
`
`t find that two cases possess identical issues; a finding that
`
`Universal Prot. Serv., LP, No. EDCV 19-2124 JGB (SPx), 2020 U.S. Dist. LEXIS
`
`Moore v.
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`

`88220, at *8 (C.D. Cal. May 15, 2020) (citing Landis v. N. Am. Co., 299 U.S. 248,
`
`254 (1936).
`
`12.
`
`In the context of inter partes review proceedings, courts in this district
`
`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
`
`2:21-cv-02302-RGK-KES, 2021 U.S. Dist. LEXIS 201641, at *3 (C.D. Cal. June
`
`24, 2021). However, the inquiry on whether to grant a stay encompasses the totality
`
`See Pause Commers., Inc. v. Hulu, Inc., No.
`
`of the circumstances. Id.
`
`13. Discovery is not complete and, although a trial date has been set,
`
`dispositive motions have not been filed. Fact discovery does not close until
`
`February 10, 2023, and the trial is scheduled for May 9, 2023. (ECF No. 66.)
`
`Although the parties have engaged in initial discovery efforts, a significant amount
`
`of discovery remains
`
`for example, no depositions have been conducted
`
`and the
`
`parties have not filed motions for summary judgment. The Court has also not
`
`started the claim construction process. This factor favors a stay. See, e.g.,
`
`Fulfillium, Inc. v. ReShape Med., LLC, No. 2:17-cv-08419-RGK-PLA, 2018 U.S.
`
`Dist. LEXIS 229793, at *4-5 (C.D. Cal. June 4, 2018) (finding this favor weighed
`
`slightly in favor of stay where a significant amount of discovery remained and the
`
`parties had not yet filed motions for summary judgment, even though the case had
`
`been pending for over a year and the Court had already touched on the substantive
`
`issues of patent invalidity); Wonderland Nurserygoods Co. v. Baby Trend, Inc., No.
`
`EDCV 14-01153-VAP (SPx), 2015 U.S. Dist. LEXIS 53053, at *6-7 (C.D. Cal.
`
`Apr. 20, 2015) (finding this factor weights in favor of granting a stay where fact
`
`discovery is not complete).
`
`14.
`
`It does not make sense for the parties or the Court to expend resources
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`Some courts find this factor to weigh in favor of a stay even before the Board
`
`institutes inter partes review, see, e.g., Wonderland Nurserygoods Co. v. Baby
`
`Trend, Inc., No. EDCV 14-01153-VAP (SPx), 2015 U.S. Dist. LEXIS 53053, at *7-
`
`8 (C.D. Cal. Apr. 20, 2015) (granting pre-institution stay), although there is far
`
`from a consensus on that, see, e.g., Pause Commers., Inc. v. Hulu, Inc., No. 2:21-
`
`cv-02302-RGK-KES, 2021 U.S. Dist. LEXIS 201641, at *4 (C.D. Cal. June 24,
`
`2021) (rejecting pre-institution stay). However, the IPRs have not only been
`
`instituted but has reached a final written decision invalidating most of the claims of
`
`the 653 Patent. At this point, simplification of the issues is likely. See Cobalt
`
`Boats, LLC v. Sea Ray Boats, Inc., No. 2:15cv21, 2017 U.S. Dist. LEXIS 225428,
`
`ify the case because it could
`
`15.
`
`Finally, there would be no undue prejudice to Gooloo or Pilot from
`
`granting the stay, as confirmed by their joint request for this relief. While the stay
`
`would, by its nature, delay the litigation, delay alone does not establish undue
`
`prejudice. Nichia, 2017 U.S. Dist. LEXIS 183610, at *16.
`
`16.
`
`For the good cause as explained in the paragraphs above, the Parties
`
`stipulate and agree to stay this case until the Federal Circuit issues its mandate on
`
`the NOCO IPR and the Shenzhen Chic IPR. Following issuance of a mandate on
`
`both the NOCO IPR and the Shenzhen Chic IPR by the Federal Circuit (or a final
`
`decision on one IPR that terminates any further proceedings on the other) the stay
`
`shall be lifted immediately upon a motion to the Court by either party. The parties
`
`agree to file a joint status report updating the Court within fourteen (14) days of the
`
`final resolution of these actions.
`
`17.
`
`The parties agree the stay is contingent upon Pilot (or any agent,
`
`person, or entity acting on its behalf) in no way attempting to remove or interfere
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`
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`Case No. 22-cv-02219-RGK-E
`
`

`

`whether on Amazon, or any other marketplace, forum, store, or related selling
`
`place. Should Pilot (or any agent, person, or entity acting on its behalf) attempt to
`
`remove or remove any Gooloo products by asserting the 653 Patent in any forum,
`
`the stay shall be lifted immediately upon a motion to the Court by either party.
`
`18.
`
`The Parties further agree that the agreement to stay the case is
`
`duration of the stay as a basis to challenge or evidence in support of any challenge
`
`claims in federal court, including, but not limited
`
`to any challenge
`
`19.
`
`The Parties further agree and stipulate that all current case deadlines
`
`shall be suspended and all activity in the case shall cease.
`
`20.
`
`The only exception to Paragraph 16 above is that the Parties agree that
`
`Pilot may continue efforts to serve a third-party subpoena on Shenzhen Carku
`
`Carku
`
`Unopposed
`
`Motion For Issuance Of Letter Of Request To Examine Persons And Inspect
`
`Documents Pursuant To Hague Convention (ECF No. 91), seeking service through
`
`the Convention on the Service Abroad of Judicial and Extrajudicial Documents in
`
`Hague Service Convention . But, any efforts to
`
`enforce the third-party subpoena, once served, shall be stayed along with the rest of
`
`the case.
`
`21. Nothing in Paragraph 16 or anything else in this stipulation shall be
`
`read
`
`mediate relief
`
`from the Court under a temporary restraining order or related procedure.
`
`Pursuant to the Local Rule 5-4.3.4, regarding signatures, I attest that
`
`concurrence in the filing of the document has been obtained from each of the other
`
`signatures listed below.
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`

`DATED: January 11, 2023
`
`PERKINS COIE LLP
`
`By: /s/ Heath L. Hyatt
`John D. Esterhay, Bar No. 282330
`JEsterhay@perkinscoie.com
`John P. Schnurer, Bar No. 185725
`JSchnurer@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, California 92130-2080
`Telephone: (858) 720-5700
`Facsimile: (858) 720-5799
`
`Oliver M. Gold, Bar No. 279033
`OGold@perkinscoie.com
`1888 Century Park East
`Suite 1700
`Los Angeles, California 90067
`Telephone: (310) 788-3291
`Facsimile: (310) 788-3399
`
`Heath L. Hyatt (Pro Hac Vice)
`HHyatt@perkinscoie.com
`1201 Third Avenue
`Suite 4900
`Seattle, Washington 98101
`
`Attorneys for Plaintiff
`Shenzhen Gooloo E-Commerce Co.,
`Ltd.
`
`DATED: January 11, 2023
`
`SHERIDAN ROSS P.C.
`
`By: /s/ Alex W. Ruge
`Alex W. Ruge, (Pro Hac Vice)
`aruge@sheridanross.com
`Robert R. Brunelli (Pro Hac Vic)
`RBrunelli@sheridanross.com
`Aaron P. Bradford (Pro Hac Vice)
`ABradforddford@sheridanross.com
`SHERIDAN ROSS P.C.
`1560 Broadway, Suite 1200
`Denver, CO 80202
`Telephone: (303) 863-9700
`Facsimile: (303) 863-0223
`
`Sean A. O Brien, Bar No. 133154
`sao@paynefears.com
`PAYNE & FEARS LLP
`
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`

`4 Park Plaza, Suite 1100
`Irvine, California 92614
`Telephone: (949) 851-1100
`Facsimile: (949) 851-1212
`
`Attorneys for Defendant
`Pilot, Inc.
`
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