Case: 3:15-cv-00621-wmc Document #: 36 Filed: 02/05/16 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`WISCONSIN ALUMNI RESEARCH
`FOUNDATION,
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`Plaintiff,
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`v.
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`APPLE, INC.,
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` OPINION AND ORDER
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`15-cv-621-wmc
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`Defendant.
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`Plaintiff Wisconsin Alumni Research Foundation (“WARF”) filed this new patent
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`lawsuit against defendant Apple, Inc., on the eve of trial in a lawsuit between the same
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`parties involving the same patent over earlier versions of technology that are alleged to
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`infringe here. Wisconsin Alumni Research Foundation v. Apple, Inc., No. 14-cv-62-wmc
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`(W.D. Wis.) (“WARF I”). Specifically, in this lawsuit, WARF alleges that Apple’s A9
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`and A9X processors infringe U.S. Patent No. 5,781,752. The court has already entered
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`judgment in WARF I, but there are a number of post-judgment motions that have only
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`recently come under advisement. Not surprisingly given the stakes, unless the court rules
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`in Apple’s favor on those post-judgment motions, Apple has stated that it expects to
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`appeal the judgment to the U.S. Court of Appeals for the Federal Circuit. For the same
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`reason, if the court were to rule in Apple’s favor, presumably WARF would appeal that
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`decision.
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`Before the court is Apple’s motion to stay this case pending a final resolution of
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`WARF I. (Dkt. #20.) The court would ordinarily be reticent to grant such a request,
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`recognizing that (1) the final resolution of the prior lawsuit may well preclude certain of
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`Apple’s defenses and counterclaims here regardless of the pending post-judgment motions
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`WISCONSIN ALUMNI RESEARCH
`FOUNDATION,
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`Plaintiff,
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`v.
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`APPLE, INC.,
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` OPINION AND ORDER
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`15-cv-621-wmc
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`Defendant.
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`Plaintiff Wisconsin Alumni Research Foundation (“WARF”) filed this new patent
`
`
`
`
`
`lawsuit against defendant Apple, Inc., on the eve of trial in a lawsuit between the same
`
`parties involving the same patent over earlier versions of technology that are alleged to
`
`infringe here. Wisconsin Alumni Research Foundation v. Apple, Inc., No. 14-cv-62-wmc
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`(W.D. Wis.) (“WARF I”). Specifically, in this lawsuit, WARF alleges that Apple’s A9
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`and A9X processors infringe U.S. Patent No. 5,781,752. The court has already entered
`
`judgment in WARF I, but there are a number of post-judgment motions that have only
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`recently come under advisement. Not surprisingly given the stakes, unless the court rules
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`in Apple’s favor on those post-judgment motions, Apple has stated that it expects to
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`appeal the judgment to the U.S. Court of Appeals for the Federal Circuit. For the same
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`reason, if the court were to rule in Apple’s favor, presumably WARF would appeal that
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`decision.
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`Before the court is Apple’s motion to stay this case pending a final resolution of
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`WARF I. (Dkt. #20.) The court would ordinarily be reticent to grant such a request,
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`recognizing that (1) the final resolution of the prior lawsuit may well preclude certain of
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`Apple’s defenses and counterclaims here regardless of the pending post-judgment motions
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`Case: 3:15-cv-00621-wmc Document #: 36 Filed: 02/05/16 Page 2 of 5
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`and likely appeal; and (2) WARF’s interest as plaintiff in resolving this lawsuit as
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`expeditiously as possible. Countervailing either consideration, however, the court also
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`recognizes issues still awaiting final resolution in WARF I, which after all appears only
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`materially different with respect to the version of the accused Apple processor in use, and
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`the likelihood that any relief granted is likely to be in the form of monetary, rather than
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`injunctive, relief. Therefore, a partial stay pending guidance from the Federal Circuit
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`could further judicial efficiency. Accordingly, the court will stay all deadlines in this
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`lawsuit, except the February 8, 2106, deadline for establishing standing, and will strike
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`the trial date pending a resolution of the WARF I appeal. During the period of the stay,
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`however, the parties may conduct liability and damages discovery relating to Apple’s A9
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`and A9X processors to the extent the initial discovery contemplated in the preliminary
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`pretrial conference order has not been completed, or either party believed additional
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`discovery at this time would be beneficial. Upon resolution of the WARF I appeal, the
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`parties should anticipate the court’s adoption of an expedited schedule with respect to
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`dispositive motions and trial.
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`In balancing the interests favoring a stay against those frustrated by one, courts
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`OPINION
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`often consider:
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`(1) Whether the litigation is at an early stage; (2) whether a
`stay will unduly prejudice or tactically disadvantage the non-
`moving party; (3) whether a stay will simplify the issues in
`question and streamline the trial; and (4) whether a stay will
`reduce the burden of litigation on the parties and on the
`court.
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`2
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`Case: 3:15-cv-00621-wmc Document #: 36 Filed: 02/05/16 Page 3 of 5
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`Grice Eng’g, Inc. v. JG Innovations, Inc., 691 F. Supp. 2d 915, 920 (W.D. Wis. 2010)
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`(internal citations omitted).
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`As for the first factor, this case is at least superficially in its early stages, with the
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`preliminary pretrial conference held three weeks ago. Of course, WARF rightly points
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`out that this case is further along given the WARF I litigation. No doubt, that litigation
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`factors heavily into this case, indeed it is the reason Apple seeks a stay. Still, at least
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`absent a wholesale reversal by the Federal Circuit, the parties will need to conduct
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`discovery on Apple’s newest processors (the subject of this lawsuit), enlist experts to draft
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`reports, file dispositive motions, and perhaps try this new case. In fairness however, a
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`final judgment in WARF I will likely have preclusive effect. Regardless, there is still
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`significant work that will need to be done in this lawsuit and, therefore, the court views
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`Apple’s request for a stay as one occurring at the early stages of this litigation.
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`As for the second factor -- prejudice to WARF -- Apple’s concession that “all
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`accused A9 and A9X products should be included in any ongoing royalty and
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`supplemental damages awards in WARF I” goes a long way to ameliorate prejudice to
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`WARF in delaying adjudication of this lawsuit.1 Furthermore, as Apple also points out,
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`the ‘752 patent is set to expire on December 26, 2016. Even if this court were to deny a
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`stay, the case would not reach trial before that date. Accordingly, absent a preliminary
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`1 WARF also mentions the A10 and A10X processor, but these processors are not mentioned in
`its present complaint, and the court is disinclined to speculate about future products in
`determining whether a stay is appropriate now. Still, should WARF formally seek to amend its
`complaint to include these other processors, the court would consider ordering further discovery
`at that time.
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`3
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`Case: 3:15-cv-00621-wmc Document #: 36 Filed: 02/05/16 Page 4 of 5
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`injunction -- which WARF did not seek in the prior litigation, and for good reason --
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`WARF’s remedy will be limited to damages.
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`As for the third factor -- whether a stay will simplify the issues in this case --
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`WARF argues that issues will not be streamlined because the final judgment in this case
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`carries preclusive effect. To say the least, this is an odd argument for WARF to be
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`making. While a Federal Circuit decision affirming in whole, reversing in part or even
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`vacating this court’s judgment in WARF I may not necessarily resolve all issues in the
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`present litigation, it is almost certain to have important implications as to what
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`additional work is required, and notwithstanding their inability to reach any settlement
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`to date, or their respective willingness to an out-of-court resolution. For example, the
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`Federal Circuit’s consideration on appeal in WARF I of this court’s orders with regard to
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`claims construction, summary judgment, Daubert challenges and other evidentiary rulings
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`at trial will almost certainly streamline the resolution of those same issues in this lawsuit.
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`Fourth and finally, because of the likely impact the Federal Circuit decision in
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`WARF I will have on this litigation, a stay will reduce the burden on this court and likely
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`on the parties. Even assuming that the prior litigation carries preclusive effect on most of
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`these issues in this litigation, it makes no sense for this court to devote resources to
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`deciding motions on the same issues without the benefit of guidance from the Federal
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`Circuit.
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`4
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`Case: 3:15-cv-00621-wmc Document #: 36 Filed: 02/05/16 Page 5 of 5
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`Weighing all of these considerations, the court finds at least a partial stay
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`appropriate.2 While the court will stay the deadlines for claims construction and
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`summary judgment motions, and other pre-trial filings and will strike the trial deadline,
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`the court sees no reason to stay discovery on the technology underlying the A9 and A9X
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`processors, nor on the facts that may underlie WARF’s claim, assuming this court’s
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`judgment is upheld. On the contrary, this strikes the court as a fair balance to the extent
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`WARF as plaintiff may wish to pursue its new lawsuit as far as possible while both sides
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`and this court await guidance from the Federal Circuit. Once the appeal in WARF I is
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`completed, the court will place this case on a fast track to final resolution.
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`IT IS ORDERED that:
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`ORDER
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`1) defendant Apple, Inc.’s motion to stay (dkt. #20) is GRANTED;
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`2) all deadlines in the pretrial conference order, except WARF’s deadline for
`establishing standing, and the trial date are STRUCK;
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`3) the parties are free to conduct discovery on the A9 and A9X processors while
`the stay is in place.
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`Entered this 5th day of February, 2016.
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`BY THE COURT:
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`/s/
`__________________________________
`WILLIAM M. CONLEY
`District Judge
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`2 The court also will cancel the March 1, 2016, status conference, though if either party believes it
`would be beneficial, it may inform the court in writing and ask that it be rescheduled.
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`5
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