Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 1 of 8 Page ID #:4094
`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 1 of 8 Page ID #:4094
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES - GENERAL
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`Case No.:
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`2:19—cv-06301-AB-KS
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`Date: February 25, 2021
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`Title: PHILIPS NORTH AMERICA LLC v. GARMHV INT’L, INC and GARMHV, LTD.
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`Present: The Honorable ANDRE BIROTTE JR., United States District Judge
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`Deputy Clerk
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`N/A
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`Court Reporter
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`Attorney(s) Present for Plaintiff(s):
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`Attorney(s) Present for Defendant(s):
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`None Appearing
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`None Appearing
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`Proceedings:
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`[In Chambers Order Granting Defendants’ Motion to Modify the
`Scheduling Order Until After the PTAB’s Final Decision on the
`’233 Patent (Dkt. No. 120) and Granting Plaintiff’s Unopposed
`Motion for Leave to File Second Amended Complaint to Withdraw
`Counts IV and V (Dkt. No. 121)]
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`I.
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`Introduction
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`Before the Court is Plaintiffs unopposed motion for leave to file a second
`amended complaint to withdraw counts IV and V. (Dkt. No. 121.)
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`Also, before the Court is Defendants Garmin International, Inc. and Garmin,
`Ltd. ’3 (“Defendants”) motion to modify the scheduling order until after the PTAB’s
`final decision on the ’233 Patent. (Dkt. No. 120.)1 Plaintiff Philips North America
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`1 Defendants characterize this motion as a request for a “mere extension” rather than
`a motion to stay. (See Dkt. No. 120 at 4; Dkt. No. 124 at 1.) But the parties analyze
`the request under the motion to stay framework, which the Court will likewise apply.
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`cv—9o (12/02)
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 2 of 8 Page ID #:4095
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`LLC (“Plaintiff”) filed an opposition (Dkt. No. 123), and Defendants filed a reply
`(Dkt. No. 124.)
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`The Court finds this matter appropriate for resolution without oral argument.
`See Fed. R. Civ. P. 78; Local Rule 7-15. For the reasons stated below, Plaintiff’s
`motion is GRANTED, and Defendants’ motion is GRANTED.
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`II. Background
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`A. District Court Proceedings
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`Plaintiff filed the present suit against Defendants on July 22, 2019. (Dkt. No.
`1.) Plaintiff filed the First Amended Complaint on December 9, 2019. (Dkt. No. 45.)
`Plaintiff alleged that Defendant has infringed U.S. Patent Nos. 6,013,007 (“the ’007
`Patent”), 7,088,233 (“the ’233 Patent”); 8,277,377 (“the ’377 Patent”); 6,976,958
`(“the ’958 Patent”); 9,314,192 (“the ’192 Patent”), and 9,801,542 (“the ’542
`Patent”). Id. ¶ 48.
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`Because the parties’ various requests for continuances are relevant to
`Defendants’ motion, the Court provides a brief summary of the relevant procedural
`background. On January 8, 2020, the Court set a trial date for March 30, 2021. (Dkt.
`No. 54.) The parties filed claim construction briefs and then filed a joint stipulation
`to extend the discovery schedule, which the Court granted. (See Dkt. Nos. 75, 77,
`79, 80, 89, and 90.) After the Court issued its claim construction order, the parties
`again filed a joint stipulation to continue certain trial deadlines, including vacating
`the trial date, which the Court again granted. (See Dkt. Nos. 102, 103, and 108.)
`Most recently, the parties filed a joint stipulation to continue the summary judgment
`schedule, which the Court granted. (See Dkt. Nos. 118 and 122.) Finally, the
`Defendants moved to stay the case pending the resolution of the IPR proceedings.
`(Dkt. No. 120.)
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`Not all of the patents asserted in the First Amended Complaint remain active
`in this case. First, the ’007 Patent was invalidated at claim construction. (Dkt. No.
`102.) Second, Plaintiff disclaimed the asserted claims of the ’968 Patent and
`withdrew its infringement allegations as to the ’192 Patent. (See Dkt. No. 118 at 2.)
`Accordingly, this leaves only the ’233 Patent, the ’377 Patent, and the ’542 Patent
`in the suit.
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`CV-90 (12/02)
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 3 of 8 Page ID #:4096
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`B. Inter Partes Review Proceedings
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`On May 15, 2020 Defendants filed a petition for inter partes review (“IPR”)
`challenging the ’233 Patent. (See IPR2020-00910.) The ’233 Patent, and all of the
`other patents in suit, generally relate to monitoring a subject’s activity or health
`condition. (Dkt. No. 102 at 2; Dkt. 118 at 3.) Defendants’ petition was joined with
`IPR2020-00783. The Patent Trial and Appeal Board (“PTAB”) instituted review of
`that IPR on October 27, 2020. (See IPR2020-00783; Dkt. No. 113-1 ¶ 7.) The PTAB
`must issue a final ruling by October 27, 2021, within one year of institution. See 35
`U.S.C. § 316(a)(11). This deadline falls three months after the current trial date.
`(Dkt. 108.)
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`III. Legal Standards
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`“A district court has the inherent power to stay its proceedings. The power to
`stay is ‘incidental to the power inherent in every court to control the disposition of
`the causes on its docket with economy of time and effort for itself, for counsel, and
`for litigants.’” Rivers v. Walt Disney Co., 980 F. Supp. 1358, 1360 (C.D. Cal. 1997)
`(quoting Landis v. N. Am. Co., 299 U.S. 248, 254 (1936)).
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`In deciding whether to grant a stay pending inter partes review proceedings,
`courts in this District have considered three factors that were originally used to
`consider requests for stays pending U.S. Patent and Trademark Office reexamination
`proceedings: “(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.” Universal Elecs., Inc. v. Universal Remote Control, Inc., 943
`F. Supp. 2d 1028, 1030–31 (C.D. Cal. 2013). While these factors are important,
`ultimately “the totality of the circumstances governs.” Allergan Inc. v. Cayman
`Chem. Co., No. 8:07-cv-01316 JVS (RNBx), 2009 WL 8591844, at *2 (C.D. Cal.
`Apr. 9, 2009).
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`IV. Discussion
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`A. Motion to Amend
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`Plaintiff moves unopposed for leave to file a Second Amended Complaint
`(“SAC”) to withdraw counts IV and V. (Dkt. No. 122.) Plaintiff has previously
`disclaimed all asserted claims of the ’968 Patent. (See Dkt. No. 118 at 2.) Plaintiff
`has also withdrawn all infringement allegations as to the ’192 Patent. Id. Plaintiff
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 4 of 8 Page ID #:4097
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`now seeks to amend the complaint to reflect these developments. Because the motion
`is unopposed, and good cause appearing for the proposed amendments, the Court
`GRANTS Plaintiff’s motion. Plaintiff shall file the proposed SAC (Dkt. No. 121-1)
`within seven days of this Order.
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`B. Motion to Stay
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`As an initial matter, the Court observes that the Defendants did not comply
`with L.R. 7-3 before filing this motion. (See Dkt. No. 120 at 1 (summarizing belated
`conference of counsel).) This violation notwithstanding, the Court will rule on the
`motion because the parties did confer, albeit belatedly, and Plaintiff did not object
`on this basis. The parties are admonished to follow the Local Rules going forward.
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`Turning to the merits of the motion, upon balancing the relevant factors and
`considering the totality of the circumstances in this case, the Court concludes that a
`limited stay is warranted.
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`1. Stage of the Proceedings
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`Given the age of this case, this factor would typically weigh against granting
`a stay. Applying this factor, the Court considers “whether discovery is complete and
`whether a trial date has been set.” See Universal Elecs., 943 F. Supp. 2d at 1030-31.
`This case is not in the early stages. It has been pending for nineteen months. (See
`Dkt. No. 1.) A trial date has been set and continued by joint stipulation. (See,
`generally, Dkt. 54 at 3, Dkt. 108.) Claim construction has occurred. (See Dkt. No.
`102.) Fact discovery is closed, and expert discovery is closing. (See, generally, Dkt.
`No. 108.) Here, it is not clear that “there is more work ahead of the parties and the
`Court than behind.” Realtime Data LLC v. Teradata Operations, Inc., No. 2:16-cv-
`02743 AG (FFMx), 2017 WL 3453295, at *2 (C.D. Cal. Feb. 27, 2017.)
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`The Court observes that the extended passage of time in this case has been
`driven in large part by the parties’ ongoing stipulations to extend deadlines,
`including recently extending the timing for dispositive briefs. (See Dkt. No. 122.)
`Moreover, considering the COVID-19 pandemic and the standing order suspending
`civil jury trials in this District, it is unlikely that the current trial date would be
`feasible.
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`The Court thus finds this factor neutral, weighing neither in favor of nor
`against granting a stay.
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`CV-90 (12/02)
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 5 of 8 Page ID #:4098
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`2. Simplification of the Issues
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`The second factor weighs in favor of a stay. Applying this factor, the Court
`considers “whether a stay will simplify the issues in question and trial of the case.”
`Aten Int’l Co. Ltd. v. Emine Tech. Co., Ltd., No. 8:09-cv-00843 AG (MLGx), 2010
`WL 1462110, at *6 (C.D. Cal. April 12, 2010). There is a “near uniform line of
`authority [reflecting the principal that] after the PTAB has instituted review
`proceedings, the parallel district court litigation ordinarily should be stayed.” NFC
`Tech. LLC v. HTC America, Inc., No. 2:13-cv-01058 WCB, 2015 WL 1069111, at
`*6–7 (E.D. Tex. March 11, 2015) (collecting cases granting a stay after the PTAB
`instituted IPR proceedings). Even when IPR proceedings are instituted on fewer than
`all the claims at issue, district courts frequently issue stays. See British Telecom.
`PLC v. IAC/InteractiveCorp, No. 1:18-cv-00366 WCB, 2019 WL 4740156, at * 7
`(D. Del. Sept. 27, 2019) (collecting cases). “[E]ven when IPRs are instituted on
`fewer than all the asserted claims, the policies favoring simplification and the
`reduction of litigation burdens on the parties and the court are often applicable,
`particularly when the claims that are before the PTAB in an IPR are similar to those
`that are not.” Id.
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`Here, where six of the twelve claims asserted by Plaintiff are from the ’233
`Patent that is subject to the IPR proceedings, the Court agrees with Defendants that
`the IPR proceedings are likely to simplify the issues in this case. As this Court has
`noted, “each of the asserted patents generally relate to monitoring a subject’s activity
`or health condition. The patents are all utilized across the same allegedly infringing
`products and involve electronic monitoring of athletes—facts that Plaintiffs also
`recognize as true.” (See Dkt. No. 118 at 3; Dkt. No. 102 at 2.)
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` If the six claims of the ’233 Patent do not survive review, it would “eliminate
`the need for trial [on those claims] or, if the claims survive, facilitate trial by
`providing the court with [the] expert opinion of the [PTAB] and clarifying the scope
`of the claims.” See Semiconductor Energy Lab. Co., Ltd. v. Chimei Innolux Corp.,
`No. 8:12-cv-00021 JST (JPRx), 2012 WL 7170593, at *2 (C.D. Cal. Dec. 19, 2012)
`(internal quotation marks and alterations omitted).
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`Moreover, given the relation between the remaining patents and claims, the
`Court finds that the “potential simplification of issues related to the [claims subject
`to IPR] outweighs the delay that will result in the adjudication of the [’377 Patent
`and the ’542 Patent claims].” Twilio, Inc. v. TeleSign Corp, No. 5:16-cv-06925 LHK,
`2018 WL 1609630, at *2 (N.D. Cal. 2018) (“Indeed, it would make little sense to
`proceed only on the [patents not subject to IPR], thereby risking a second trial on the
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`CV-90 (12/02)
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 6 of 8 Page ID #:4099
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`other two patents if they survive IPR, nor would it make sense to proceed on all three
`patents when two of them may later be invalidated.”).
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`Finally, if the PTO finds certain claims to be patentable after instituting
`review, Defendants would be estopped under 35 U.S.C. § 315(e)(2) from presenting
`invalidity arguments which were raised, or reasonably could have been raised, in the
`IPR. Applying such a finding to this case would save time and resources because
`summary judgment motions and trials on some issues may become unnecessary.
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`In the interest of judicial and party efficiency, this factor weighs in favor of a
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`stay.
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`3. Potential Undue Prejudice
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`The third factor, potential undue prejudice, weighs in favor of a stay When
`considering prejudice or a clear tactical disadvantage to Plaintiff, the Court considers
`factors “such as the timing of the requests for reexamination and a stay, the status of
`the reexamination proceedings, and the relationship of the parties.” See SCA Hygiene
`Prods. Aktiebolag (“AB”) v. Tarzana Enterprises, LLC, No. 2:17-cv-04395-AB
`(JPRx), 2017 WL 5952166, at *5 (C.D. Cal. Sept. 27, 2017). “Courts have repeatedly
`found no undue prejudice unless the patentee makes a specific showing of prejudice
`beyond the delay necessarily inherent in any stay.” PersonalWeb Techs., LLC v.
`Apple, Inc., 69 F. Supp. 3d 1022, 1029 (N.D. Cal. 2014) (emphasis added).
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`Here, Plaintiff asserts that Defendants filed their “IPR petition on April 8,
`2020, over eight months after receiving service of the complaint in this action.” (Dkt.
`No. 123 at 7.) The Court notes that this filing falls well within the 12-month statutory
`window allowed by Congress. See 35 U.S.C. §315(b). Plaintiff further asserts
`prejudice because Defendants waited almost three months after institution of the IPR
`proceedings to bring this motion. Id. Defendants do not explain the delay in filing
`the motion, but focus instead on Plaintiff’s three-year delay in bringing this suit after
`first learning of the alleged infringement. (See Dkt. No. 120 at 7, Dkt. No. 124 at 4–
`5.)
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`The proposed harms do not amount to “a specific showing of prejudice beyond
`the delay necessarily inherent in any stay.” See PersonalWeb Techs., 69 F. Supp. 3d
`at 1029. Further, Plaintiff has made no showing concerning how granting a stay will
`injure its revenues or give a competitive advantage to Defendants, factors that
`traditionally weigh against granting a stay. See Semiconductor Energy Lab. Co.,
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 7 of 8 Page ID #:4100
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`2012 WL 7170593, at *3; see also Universal Elecs., Inc., 943 F. Supp. 2d at 1033–
`34. Accordingly, this factor weighs in favor of granting Defendants’ motion to stay.
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`Weighing the totality of the circumstances, the Court concludes that a stay is
`warranted in this case. Although a trial date has been set and this case is moving
`toward a late stage, the Court finds that the age of the case is due, in large part, to
`the parties’ repeated requests for continuances. Moreover, Plaintiff has not shown
`that it would suffer specific undue prejudice. Finally, Defendants have established
`that a stay would likely benefit the parties and the Court by simplifying or informing
`the remaining issues in this case.
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`Defendants variably request an order extending the scheduling order by three
`months, an order extending the dates for nearly one year, and a stay generally. (See,
`e.g., Dkt. No. 124 at 1, Dkt. No. 120-4.) Because the Court bases its decision to grant
`the stay on the potential impact of the PTAB’s forthcoming IPR ruling, the Court
`finds that only a limited stay is warranted. Accordingly, the Court stays the case until
`ten days after the expected PTAB decision date, i.e., until November 10, 2021.
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`V. Conclusion
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`For the foregoing reasons, the Court GRANTS the Unopposed Motion for
`Leave to File Second Amended Complaint to Withdraw Counts IV and V (Dkt. No
`122) and GRANTS the Motion to Modify the Scheduling Order Until After the
`PTAB’s Final Decision on the ’233 Patent. (Dkt. No. 120.)
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`The Court ORDERS that Plaintiff may file within 7 days of the issuance of
`this Order the proposed Second Amended Complaint, in the form submitted as
`Exhibit A to Plaintiff’s unopposed motion.
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`The Court ORDERS the parties to file periodic Joint Status Reports indicating
`the status of the IPR proceedings and what steps remain in the IPR proceedings. The
`first such report is due May 22, 2021. Successive reports shall be filed every 90 days
`thereafter, or within 14 days of a decision from the PTAB concluding the IPR
`proceedings, whichever occurs earlier. Each report must state on the face page the
`date on which the next report is due. The stay will be lifted 14 days after the decision
`from the PTAB concluding the IPR proceedings, or November 10, 2021, whichever
`comes sooner. The final, post-IPR report must include a Stipulation and
`Proposed Order for moving the case forward.
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`Case 2:19-cv-06301-AB-KS Document 125 Filed 02/25/21 Page 8 of 8 Page ID #:4101
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`The Court VACATES all pending calendar dates. This Court retains
`jurisdiction over this action and this Order shall not prejudice any party to this action.
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`IT IS SO ORDERED.
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`CV-90 (12/02)
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