Case 4:22-cv-07608-HSG Document 89 Filed 12/29/23 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`APPLE INC.,
`
`Plaintiff,
`
`v.
`
`ALIVECOR, INC.,
`Defendant.
`
`Case No. 22-cv-07608-HSG
`
`ORDER GRANTING MOTION TO
`STAY
`Re: Dkt. No. 62
`
`On October 23, 2023, Defendant AliveCor, Inc. (“Defendant” or “AliveCor”) filed a
`motion to stay the case pending completion of inter partes review (“IPR”) proceedings. Dkt. No.
`62 (“Mot.”). The Court, in its discretion, finds this matter suitable for resolution without oral
`argument. See Civ. L.R. 7–1(b). For the reasons articulated below, the Court GRANTS
`AliveCor’s motion and stays this action pending the institution decisions regarding its IPR
`petitions.
`
`I.
`
`BACKGROUND
`Plaintiff Apple, Inc. (“Apple”) filed this action for patent infringement on December 12,
`2022. Dkt. No. 1. In the Complaint, Apple alleges direct and indirect infringement of four
`patents, all related to electrocardiogram (“EKG”) technology and related applications: U.S. Patent
`Nos. 10,076,257 (“the ’257 Patent”); 10,270,898 (“the ‘898 Patent”); 10,866,619 (“the ’619
`Patent”); 10,568,533 (“the ’533 Patent”) (collectively “Asserted Patents”). See id. ¶¶ 13, 16, 19,
`22. Apple asserts at least claim 1 of the ’257 Patent (id. ¶ 30); at least claim 1 of the ’619 Patent
`(id. ¶ 57); at least claim 1 of the ’898 Patent (id. ¶ 86); and at least claim 20 of the ’533 Patent (id.
`¶ 119). The accused products are AliveCor’s KardiaMobile Card, KardiaMobile, KardiaMobile
`6L, Kardia App, KardiaPro (and related products) and Kardia care (and related products)
`IPR2023-00950
`Ex. 3001
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`Case 4:22-cv-07608-HSG Document 89 Filed 12/29/23 Page 2 of 6
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`(collectively, “Accused Products”). Id., ¶ 24.
`On June 7, 2023, AliveCor filed two petitions for inter partes review (“IPR”) at the United
`States Patent and Trademark Office (“USPTO”), challenging the patentability of the ’619 Patent
`(IPR2023-00948 and IPR2023-00949) and one petition for IPR challenging the patentability of the
`’257 Patent (IPR2023-00950). Mot. at 2. On September 27, 2023, and October 30, 2023,
`AliveCor filed further petitions for IPR challenging the patentability of the ’898 Patent and ’533
`Patent, respectively (IPR2023-01434 and IPR2024-00095). Id. On October 23, 2023, AliveCor
`filed this motion, requesting that the Court stay this action pending resolution of the IPRs. The
`USPTO is expected to issue decisions whether to institute IPR2023-00948 and IPR2023-00949 on
`January 12, 2024, and whether to institute IPR 2023-00950 on January 11, 2024. Id. The
`institution decision for IPR2023-01434 is expected on April 5, 2024, and IPR2024-00095 is
`expected shortly thereafter. Finally, the USPTO has instituted an IPR proceeding as to the ’257
`Patent, brought by Masimo Corporation, on October 16, 2023. Id.
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`II.
`
`LEGAL STANDARD
`“Courts have inherent power to manage their dockets and stay proceedings, including the
`authority to order a stay pending [IPR].” Ethicon, Inc. v. Quiggin, 849 F.2d 1422, 1426–27 (Fed.
`Cir. 1988) (internal citations omitted); IXI Mobile (R & D) Ltd. v. Samsung Elecs. Co., No. 15-cv-
`03752-HSG, 2015 WL 7015415, at *2 (N.D. Cal. Nov. 12, 2015). Courts consider three factors in
`determining whether to grant a stay pending IPR: “(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 non-
`moving party.” IXI Mobile (R & D) Ltd., 2015 WL 7015415, at *2 (quoting Evolutionary
`Intelligence, LLC v. Facebook, Inc., No. 13-cv-04202-SI, 2014 WL 261837, at *1 (N.D. Cal. Jan.
`23, 2014)). The moving party bears the burden of demonstrating that a stay is appropriate. DSS
`Tech. Mgmt., Inc. v. Apple, Inc., No. 14-cv-05330-HSG, 2015 WL 1967878, at *2 (N.D. Cal. May
`1, 2015).
`Courts in this district have often recognized “a liberal policy in favor of granting motions
`to stay” pending IPR. See Pragmatus AV, LLC v. Facebook, Inc., No. 11–cv–02168–EJD, 2011
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`WL 4802958, at *2 (N.D. Cal. Oct. 11, 2011); IXI Mobile (R & D) Ltd., 2015 WL 7015415, at *2.
`Courts, however, must evaluate stay requests on a case-by-case basis. See GoPro, Inc. v. C&A
`Marketing, Inc., No. 16-cv-03590-JST, 2017 WL 2591268, at *2 (N.D. Cal. June 15, 2017).
`Ultimately, whether to issue a stay is a matter of the Court’s discretion.
`
`III. DISCUSSION
`A. Factor 1: Stage of Proceedings
`“The first factor the Court considers is whether the litigation is at an early stage.” Cooler
`Master Co. v. Asetek Danmark A/S, No. 21-CV-04627-HSG, 2022 WL 2673089, at *2 (N.D. Cal.
`June 14, 2022) (citing AT&T Intellectual Property I v. Tivo, Inc., 774 F. Supp. 2d 1049, 1052
`(N.D. Cal. 2011)). Specifically, courts consider “whether discovery is complete and whether a trial
`date has been set.” Evolutionary Intelligence, 2014 WL 261837, at *1.
`AliveCor contends that this factor weighs in favor of a stay because “[t]his case
`undoubtedly remains in the initial stages of litigation” and “[t]his is not a case where a substantial
`amount of fact discovery has been completed.” Mot. at 4. AliveCor represents that neither party
`has taken a single deposition, nor engaged in expert discovery. Id. Apple contends that this factor
`weighs against a stay as claim construction is underway, and Apple has filed its opening claim
`construction brief. See Dkt. No. 88.
`While the Court recognizes that claim construction has begun, the Court finds that this case
`is still at a relatively early stage overall. Discovery is far from complete, and no trial date has
`been set. Accordingly, this factor weighs in favor of a stay, certainly at least until the USPTO
`issues institution decisions as to the AliveCor IPR petitions.
`
`B. Factor 2: Simplification of Case
`AliveCor argues that a stay would simplify the issues in this case, “by rendering some or
`all of Apple’s infringement claims moot, simplifying AliveCor’s invalidity arguments at trial, and
`providing the Court with the USPTO’s expert opinion on the claims at issue.” Mot. at 5.
`Apple does not meaningfully dispute that the IPRs could simplify the issues in this case,
`instead arguing that it is unlikely the USPTO will institute based on AliveCor’s IPR petitions
`because “AliveCor’s IPR petitions are unusually weak on the merits.” Dkt No. 65 (“Opp.”) at 5.
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`Apple urges the Court to consider the merits of AliveCor’s IPR petitions and conclude that the
`USPTO likely will decline institution, such that a stay would unnecessarily delay this case. The
`Court declines to do so. The institution decisions regarding the AliveCor IPR petitions are
`expected soon, and a stay until those decisions are issued will not unduly delay the case. There is
`no reason for the Court to delve into the merits of these IPR petitions when the USPTO’s
`decisions are imminent. And once Apple’s invitation to prejudge the outcome of those decisions
`is set to the side, this case squarely presents the usual situation in which the results of any
`instituted IPRs obviously could simplify the case. Therefore, this factor also weighs in favor of a
`stay pending the institution decisions.
`
`C. Factor 3: Prejudice and Disadvantage
`The final factor considers whether a stay would unduly prejudice the nonmoving party. In
`assessing this factor, courts “address four considerations when evaluating prejudice: (1) the timing
`of the IPR petition; (2) the timing of the stay request; (3) the status of review; and (4) the
`relationship of the parties.” Cooler Master, 2022 WL 2673089, at *2 (citing SAGE
`Electrochromics, Inc. v. View, Inc., No. 12-cv-06441-JST, 2015 WL 66415, at *3 (N.D. Cal. Jan.
`5, 2015)).
`
`i. Timing of IPR Petitions and Request to Stay
`AliveCor filed its earliest IPR petitions on June 7, 2023, and filed this motion on October
`23, 2023, roughly a week before the filing of its final IPR petition. Stays pending IPR can result
`in substantial delay in the district court proceeding, but the current record does not support a
`finding of purposeful delay or lack of diligence by AliveCor. The Court finds that the timing of
`the IPR petitions and motion to stay weighs in favor of a stay.
`
`ii.
`Status of Proceedings
`Institution decisions in the AliveCor IPR petitions are expected shortly, with the earliest
`within a few weeks of the date of this order. Moreover, the USPTO has instituted one IPR
`proceeding against the ’257 Patent, which AliveCor represents as including “some overlapping
`prior art asserted in AliveCor’s petition.” Dkt. No. 69 (“Reply”) at 5. Thus, this subfactor also
`weighs in favor of a stay.
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`iii. Relationship of the Parties
`In considering the relationship of the parties, the Court asks if the parties are direct
`competitors, which would increase the risk of prejudice to the non-moving party. See TPK Touch
`Sols. Inc. v. Wintek Electro-Optics Corp., No. 13-cv-02218 JST, 2013 WL 6021324, at *5 (N.D.
`Cal. Nov. 13, 2013). However, courts in this district require “evidence to substantiate an
`argument that direct competition will result in prejudice to the non-moving party.” Cypress
`Semiconductor Corp. v. GSI Tech., Inc., No. 13–CV–02013–JST, 2014 WL 5021100, at *5 (N.D.
`Cal. Oct. 7, 2014) (collecting cases). AliveCor represents that it and Apple were, but no longer
`are, direct competitors. See Mot. at 7; Reply at 3. For its part, Apple does not contend that the
`parties are currently direct competitors, but argues that AliveCor’s positions in this motion are
`inconsistent with positions it has taken in other cases. Opp. at 3.
`Apple’s primary argument on this factor is that the risk of prejudice is high because the
`relationship between the parties is “unique,” in that this case is part of a “broader set of legal
`disputes between the parties.” Opp. at 2. It argues that AliveCor is seeking an “unfair advantage”
`here by asking to delay this proceeding while simultaneously seeking resolution of other disputes
`where it is the petitioning party, including in this District and before the United States
`International Trade Commission. Id. The Court is not convinced that Apple has established
`“evidence to substantiate its general assertions that a stay will result in competitive injury.”
`Cooler Master, 2022 WL 2673089, at *3. Apple’s sole argument here is that there are other
`proceedings in which AliveCor has not sought a stay, but those proceedings involve entirely
`different patents – or in the case of the antitrust lawsuit, entirely different claims – such that a stay
`may or may not have been appropriate given the circumstances in those cases. Apple provides no
`evidence as to why the relationship of the parties, or the existence of those pending parallel
`actions, would uniquely prejudice Apple beyond the delay necessarily inherent in any stay. See
`PersonalWeb Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1029 (N.D. Cal. 2014). Absent such
`evidence, the Court does not find that a stay at least until institution decisions issue on the
`AliveCor IPR petitions would uniquely or unduly prejudice Apple here.
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`Case 4:22-cv-07608-HSG Document 89 Filed 12/29/23 Page 6 of 6
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`IV. CONCLUSION
`Having considered the relevant factors in their entirety, the Court finds in its discretion that
`a stay of this case pending at least the first institution decisions on AliveCor’s IPR petitions is
`warranted. Accordingly, the Court GRANTS AliveCor’s motion to stay pending an initial
`decision by the USPTO concerning whether to institute AliveCor’s IPR petitions. Within seven
`days of the issuance of the USPTO’s decisions on whether to institute IPR on the ’619 and ’257
`Patents, the parties shall file a joint status report of no more than one page, without any argument,
`simply notifying the Court of the decisions and attaching copies. Once it reviews that report, the
`Court will decide whether to lift or continue the stay, which remains in place unless and until
`otherwise ordered.
`IT IS SO ORDERED.
`Dated: December 29, 2023
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`______________________________________
`HAYWOOD S. GILLIAM, JR.
`United States District Judge
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